Can one Monopolise word like Masla And Magic? 6 year long battle to an end by HC of Madras

A suit was filed by ITC against Nestle India for using the expression magica masala for its Maggi noodles product, ITC entitlements it was elevated from the branding for its Sunfeast Yipee! Noodles product.

The judgement was delivered by Justice C. Saravanan on 10th June, stating that no body can claim exclusive right over the expression of laudatory words like Magic Masla for their use.

The Claim
The Madras High Court in ITC v. Nestl India on June 10's arrives judgment by ending 6 years long battle over a food product between these two companies who are competitors in instant noodle trade. In it, ITC claims the right to restrain Nestl from using the words MAGIC MASALA.

The Court observed that both brands are standing with the distinctive image into the market for their food products. Their packaging (ITC's YIPPIE & NESTLE'S MAGGIE) are sufficient for consumers to recognize them. So there can't be a stand of a case with claim using similar or deceptively similar word for food product.

1. Whether the Plaintiff's mark MAGIC MASALA is inherently distinctive or is descriptive but has acquired secondary meaning?
   Ans.- The Hon'ble Court relied on McCarthy on Trademarks and Unfair Competition (3rd Edition), to hold that the mark 'MAGIC MASALA' is a 'suggestive trade mark' as imagination is required on the part of the customers to get some direct description of the product from the term.
   
   The Court observed that:
   descriptive term directly and clearly conveys information about the ingredients, qualities, or characteristics of the product or service, the 'suggestive term only indirectly suggests these things.
   
   The Court further observed that word/mark MAGIC MASALA indirectly suggests magical change by consuming the Plaintiff's product and therefore, the word/mark 'Magic' or 'Magical' cannot be considered as descriptive and it is only distinctive word or mark, having secondary meaning.
   
   The Court also observed that having regard to the fact that the word 'MAGIC MASALA' is distinctive, the Plaintiff is entitled to the relief of injunction even accepting the case of the Defendant that the trade dress of the two products are entirely different.
   
   
2. Whether the Plaintiff has made out a prima facie case for grant of injunction?
   Ans.- On the second issue, the Court observed that the Plaintiff's product is popularly known as MAGIC MASALA, though it is marketed under the brand Sunfeast Yippee, admittedly, Plaintiff is the prior user of the word 'MAGIC MASALA', and Plaintiff has proved it's market share, and considering all these aspects, a prima facie case has been made out by the Plaintiff.
   
   The Defendant was restrained from using the mark 'MAGICAL MASALA' or any other deceptively similar mark to Plaintiff's mark MAGIC MASALA till the pending disposal of the suit.

The Finding
The Court further noted 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 Court's assessment of trade mark law also requires ITC to show that its implementation and use of Magic Masala is unique, to the prohibit others in the market for it's use. This claim is challenged by some remarkable groundwork by Nestl, which identifies that the words Magic Masala are in use by numerous food brands in the market. A dozen or so of these?-?including, most prominently, Lay's Magic Masala for potato chips?. It was rather used to name the flavour along some of its other flavours such as classic, onion flavour, etc.? would fit comfortably inside the deceptive similarity strictures sought to be imposed on Nestl here.

The judge also observed that, 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.

Section 9 in The Trade Marks Act, 1999

9. Absolute grounds for refusal of registration:

1. The trade marks-

   1. which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
      
      
   2. which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
      
      
   3. which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
      
      

2. A mark shall not be registered as a trade mark if-

   1. it is of such nature as to deceive the public or cause confusion;
   2. it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
   3. it comprises or contains scandalous or obscene matter;
   4. its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
      
      

3. A mark shall not be registered as a trade mark if it consists exclusively of-

   1. the shape of goods which results from the nature of the goods themselves; or
   2. the shape of goods which is necessary to obtain a technical result; or
   3. the shape which gives substantial value to the goods.

Explanation:
For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.
Finally, the Court does well to settle that no unique claim over Magic Masala is justifiable for either ITC or Nestl�.

It does so in the following words:
It would unfair to take a view that two common English and Indian words MAGIC and MASALA respectively or when together which are common to the trade former being laudatory had become distinctive of [ITC's] Sunfeast Yippee! noodles so much so that the expression Magic Masala had transcended itself to the status of a sub-brand. Even in an ephemeral sense, the expression Magic Masala cannot be said to have became distinctive as it is common to the trade.

In the Atlas Cycle Industries Ltd. v. Hind Cycles Limited; (1973) ILR 1 Delhi 393, the Court while in view of the trade marks EASTERN STAR and ROYAL STAR, held the mark STAR per se to be protectable when evidence was lead by the Plaintiff towards the fact that the cycle of the Plaintiff have to come to be known as 'STAR' Cycles because of the device of the Star. In this case, there is no evidence, and such a strong opinion appears to be grossly incorrect.