Seven years long issue between ITC Limited and Nestle India Limited on account of adoption of the expression “MAGICAL MASALA” was finally settled by the Madras High Court on 10th June, 2020 stating that nobody can claim exclusive right over the expression of laudatory words like ‘Magic Masala’ for their use. The judgment was delivered by Justice C. Saravanan Justice while dismissing the plea moved by ITC to restrain Nestle India from using the expression ‘Magical Masala’ on their noodles product.
In 2010, ITC introduced Sunfeast Yippee! Noodles in two varieties, namely “Classic Masala” and “Magic Masala”. The adoption by Nestle of the deceptively similar expression “Maggi xtra-delicious Magical Masala” in 2013 to market their noodles with the aforementioned infringing trademark was the main issue raised by ITC/Plainitff and called it an act of passing off.
The claim developed by ITC was that the word “Magic Masala” is the principle element of their trademark “Sunfeast Yippie! Noodles Magic Masala” and the word “Magic Masala” had become distinctive and were widely acknowledged by the trade and the public as theirs. Not only this, it was also adamantly advanced by the Plaintiff That it was promptly renowned right from its launch, and that it accrued prominence and enormous goodwill, which culminated in massive turnover and stupendous growth; Thanks to its outstanding consistency and prestige, the Plaintiff’s “Magic Masala” had gained distinctiveness and secondary meaning and had been synonymous with the Plaintiff and nobody else.
According to the defendant( Nestle India Ltd) , the term “Magic” was used to characterise the quality of the masala in the packet as “Magic Masala”. It defines the masala in the sachet used to make taste of the noodles in the pack as delightful/exceptional/outstanding/phenomenal, etc. However, the defendant has not only applied for registration of the word such as “Maggi Masala-Ae-Magic” (taste enhancer), Magic, Mithai Magic etc., but has also initiated proceedings before the trademark registry against other proprietors to prevent them from a registering the word “Magic” against Radika Food for registration of the words “Magic Masti”.
The plaintiff’s counsel argued that both the parties are engaged in the same business of supplying instant noodles and considering that both the products have identical sub-brands, there was misunderstanding and the possibility of misleading the consumers. He further stated that the consumers are not expected to check the details in a road side grocery shop. The retailers themselves may confuse and substitute one product for another when orders are placed for “Magic Masala”.
It was Defendant case that the food industry market has been swamped with various items, where the words “Magic” and “Masala” are popular. The expression “Magic Masala” or “Magical Masala” or “Classic Masala” or “Meri Masala” or “Masala Yo” are nothing, but flavour descriptors which are a common expression in the food industry and cannot be subjected to any proprietary right by any member of the trade to the exclusion of others. The defendant referred to several other products in the food industry where the word “Magic” was used and therefore submitted that apart from the fact that the word “Magic” being laudatory and incapable of any unfair appropriation and protection was also in use in the trade even before the plaintiff entered the FMCG sector in the year 2010 when it launched “Sunfeast Yippee! noodles” in two different flavours, namely, “Classic Masala” and “Magic Masala”.
In any case, according to the defendant, they are the prior user of the terms / words such as “Magic” and “Masala” for at least 9 or more of their products referred for taste enhancers in the year 2009 “Maggi Masala-Ae-Magic” “Maggi Magic Cube” as flavour solutions in the year 2003 with the tagline “pinch of goodness” and in Hindi “Chutkibhar Jadoo” and “Maggi Dal Magic” for example. Apart from these, the defendant also gave examples of the following products of the defendant’s where the word “Magic” was used by the defendant for various food products:-
- MAGGI Magic Sinigang
- MAGGI Magic Sarap
- MAGGI Magic Chef
- MAGGI Magic Meals
- MAGGI Magic Sabaw
- MAGGI Magic Lezat
- MAGGI Magic Asia
- MAGGI Magic Curry mix
- MAGGI Magic Chicken
The Court dealt with the difference between generic names/marks and trademarks as “A word or expression becomes trademark, if it is either distinctive or is intended to distinguish the product. A distinctive mark is that mark which requires no proof of its distinctiveness. It is unique and different from others. It is class apart and stands out as distinctive from others. There is a marked difference between the generic name and trademarks. Generic name can never be monopolised while a trademark can be”
The court further explained that in the claim for passing off, the onus is on the plaintiff to establish that it has proprietary right and such right is not permissible unless the plaintiff establishing the following three factors namely:
- That the mark has been used prior in point of time by the plaintiff;
- That the mark has been used as trade mark (Section 2(1)(zb)) so as to distinguish the Plaintiff’s product from similar products of others in the trade and not to describe character or quality of masala;
- That upon such exclusive and extensive use as trademark, it has acquired such level of distinctiveness, goodwill and reputation that it has come to identify the source and origin of instant noodles of the Plaintiff.
The Court clarified the purpose of passing-off action: while referring to Sir Shadi Lal Enterprise Ltd.Vs. Kesar Enterprise Ltd., 1998 PTC(18) stating that it is not only to protect commercial goodwill but is also to ensure that the purchasers are not exploited and dishonesty in-trading is prevented. For that the plaintiff must establish that his business or goods have acquired reputation.
The court referred to Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73,wherein the Hon’ble Supreme Court observed as under:
“Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
- The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
- The degree of resembleness between the marks, phonetically similar and hence similar in idea.
- The nature of the goods in respect of which they are used as trade marks.
- The similarity in the nature, character and performance of the goods of the rival traders.
- The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
- The mode of purchasing the goods or placing orders for the goods.
- Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”
After dealing with the concept of passing-off in detail, the Court held that both the words “Magic” and its derivative “Magical” are common to the trade. Therefore, neither the plaintiff nor the defendant can claim any monopoly over the expression“Magic” or “Masala” for they are common words in Indian culinary and Indian food industry. The expression “Magic” was not used as a “flavour descriptor” by the plaintiff because there is no flavour known to the world which is called “Magic”. Therefore, the expression “Magic Masala” was not used as a flavour descriptor by the plaintiff. The plaintiff has used the word “Magic” to name the flavour in sachet as “Magic” and thus called it “Magic Masala”.
While considering that“Magic Masala” has been used by the Plaintiff in laudatory manner to praise the “masala”, the Court observed that Laudatory epithet cannot be given monopoly or protection. The expression “Masala” signifies a mixture of ground spices used in Indian cooking. It is a household name in Indian culinary and is used for describing a mixture of different spice. It is a generic name to collectively call a mix of different spice. The said word is used across length and breadth of the county irrespective of the zone, culture and geographical location. Masala flavour differs from place to place, and is unique to the region and area. In most Indian languages, it is a common term for identifying the spice mixture and it can never be appropriated.
The Court held that no person can claim any monopoly over the said word “Magic” or “Magical” or their derivative as they are common to the trade. Therefore, it is incapable of being monopolised by any trader. The word “Magic Masala” has been used by the plaintiff to describe the characteristics and quality of the flavour of masala sold along with “Sunfeast Yippee! noodles”. Hence, use thereof is incapable of conferring any proprietary right in law on plaintiff. “Magic Masala” is not the registered trademark of the plaintiff and therefore no statutory right can be claimed by the plaintiff therein.
The Court further held that there is no visual or ocular similarity between the two wrappers and the scope of confusion is done away with.
The court rejected monopoly over a downright descriptive word which has been commonly used in the trade for many years.
“Magic” or “Masala” are just extolling expressions due to which neither the plaintiff nor the defendant were allowed to claim the monopoly over the respective words.
While it can be said that adaptation of “Magical Masala” may have been inspired by “Magic Masala” it still does not qualify to be called an act of passing-off and the judgment is welcomed as the amount of users of descriptive words/expressions claiming registration to gain monopoly will see a decline.
By: Bharti Badesra (Senior Partner)
O.P. Khaitan & Co