The Madras High Court recently dismissed a suit for passing off brought by ITC while ruling that neither ITC’s Sunfeast Yippee! noodles nor Nestle India’s Maggi noodles could claim a monopoly over the word “magic” in describing its products like magic masala (ITC Limited v. Nestle India Limited).
Justice C Saravanan observed,
“The word ‘Magic’ is laudatory. It is incapable of being appropriated by the plaintiff (ITC). As such 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.”
ITC claimed that Nestle was passing off its noodle product Maggi noodles with the use of the phrase “Magical Masala” while describing its flavour which was deceptively similar to the phrase used by ITC while describing its product, Sunfeast Yippee!, which came in the flavour Magic Masala.
The Court noted that in such matters, “the thumb rule under the law is that words or the expression which and are not distinctive are inherently weak and are therefore incapable of being registered or protected.”
Also referring to Section 9 of the Trademarks Act, according to which generic names can never be registered, the court held,
“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.”
Noting that Nestle had also used the word ‘magic’ in relation to other non-noodle food products prior to its use in reference to the Yippee! noodle flavour sachet,the Court added,
“It also appears that the expression “Magic Masala” was first adopted by Lays for their potato chips [Exhibit D-15]. It was rather used to name the flavour along some of its other flavours such as classic, onion flavour, etc.”
Acknowledging that the combination of “Magic” and “Masala” were first used together in 2010 in reference to Yippee noodles, it was noted that the phrase “Magical Masala”, used for Maggi noodles later was “certainly inspired from the adoption of the expression ‘Magic Masala'” for Yippee! noodles.
However, the Court has ruled,
“such adoption cannot be said to be malafide. It was a legitimate adoption by the defendant (Nestle Maggi) as no person can appropriate common and laudatory words.“
“… the plaintiff (ITC) has used the expression “Magic Masala” in a laudatory manner to praise the “Masala” in the sachet. Laudatory epithet cannot be given monopoly or protection as has been held by Courts… Since it is a laudatory word, it can never be monopolised. “
Adding that since “Masala” is a common word, no monopoly can be claimed over this term, the court held,
“It is a common name for describing the mixture of spice in majority of the Indian languages. Therefore, it can never be appropriated”
It furthernoted that it appearedthat ITC had ever intended for the phrase “Magic Masala” to be used as a trademark or a sub-brand as no trademark application had been filed to register the said phrase.
“In fact, if the plaintiff (ITC) had filed a trademark application to register the expression “Magic Masala” as a word mark, it would have been rejected by the Trade Mark Registry under Section 9 of the Trade Marks Act, 1999.”
Pointing out that ITC merely called a flavour of Yippee! noodles as “Magic Masala” to help consumers to distinguish between different flavours, the court held that ITC did not intend use “Magic Masala” as trademark or a sub-brand.
Hence the Court proceeded to dismiss ITC’s suit, concluding that,
“In my view, neither the plaintiff nor the defendant can claim the monopoly over the respective laudatory words ‘Magic’ or ‘Magical’ along with common word ‘Masala’ to the exclusion of one another. Therefore, neither the plaintiff nor the defendant can dissect a portion of a label and claim monopoly over it. As such the plaintiff cannot claim monopoly over the expression ‘Magic Masala'”
Read the order here:
