By Alisha Dargar-
On June 10, 2020, the Madras High Court settled a seven-yr. prison conflict among enterprise giants, ITC and Nestle in favor of the latter. In 2010, ITC released Sunfeast Yippee! ‘Magic Masala’ and in 2013, Nestle launched Maggi ‘Magical Masala’. ITC claimed that it changed into a quintessential part of its composite trademark ‘Sunfeast Yippee! Noodles Magic Masala’ and that Nestle changed into infringing this trademark via way of means of the use of the term ‘Magical Masala’. Therefore, problems that stand up are twofold. Firstly, whether or not Nestle occurred ITC’s trademark? And secondly, whether or not unusual place phrases utilized in an enterprise may be monopolized? This article seeks to observe those prison questions with inside the case of M/s ITC Limited vs. Nestle India Limited.
Background of the case
C.S No. 231 of 2013
Madras High Court
In 2010, ITC launched Sunfeast Yippee! ‘Magic Masala’ and in 2013, Nestle released Maggi ‘Magical Masala’. ITC claimed that ‘Magic Masala’ was an integral part of its composite trademark ‘Sunfeast Yippee! Noodles Magic Masala’ and that Nestle was infringing this trademark by using the term ‘Magical Masala’. Importantly, ITC had not registered that above-mentioned expression so it instituted a suit for passing off instead of infringement.
Whether the defendant has passed off the plaintiff’s trademark?
Whether common words used in an industry can be monopolized?
The courtroom docket changed into of the perception that the defendant did now no longer by skip off the plaintiff’s trademark. The courtroom docket opined that the phrases ‘Magic’ and ‘Magical’ are not unusual place phrases used frequently with inside the meals industry, consequently, neither the plaintiff nor the defendant can declare a monopoly over those phrases. Further, those phrases were used as a flavor descriptor, a laudatory epithet to the word ‘Masala’ and consequently can't be trademarked.
In today’s world, logos were imprinted in people’s minds to such an quantity that the product is the logo and now no longer the alternative manner around. Take for instance merchandise like Casio, Pampers, Band-Aid. Their logos have ruled their respective industries a lot that the product is typically mentioned via way of means of the logo call. This suggests the significance of a hallmark to a logo or company. Therefore, generally for the safety in their brands, businesses formally sign up their logos. This registration offers prison possession over the logo call, emblem etc, which means that the proprietor has one of a kind rights to use, sell, adjust the trademark. It protects the logo call from utilization via way of means of others. Violation of a registered trademark can bring about a in shape for trademark infringement. Here, entirely proving a misleading similarity could suffice in a courtroom docket of law. However, while the trademark isn't always registered, the proprietor nonetheless has a treatment of submitting a in shape for passing off of the trademark. Here, the plaintiff should now no longer most effective show a misleading similarity however additionally the financial fee and goodwill of its logo call. Importantly, withinside the gift case, ITC had now no longer registered its trademark so it instituted a in shape for passing off as opposed to infringement.
The essence of ITC’s contentions was that Nestle had, with malice, used the term ‘magical’ originating from ITC’s brand name ‘Magic’ in order to associate itself with ITC’s goodwill and deceive an ordinary consumer into buying its product. ITC went on to say that ‘Magic Masala’ was an important element in Sunfeast’s sub-brand name and not just a description of the flavour. Since Sunfeast had been publicly recognized and appreciated and had an economical value, its trademark although unregistered, still qualified as a valid trademark.
Whereas, Nestle contended that ITC can't declare any such logo call as a legitimate trademark. It said that a hallmark can't had been stated to be violated if it became used as an outline to suggest the ‘kind, quality, quantity, supposed purpose, value, geographical origin, the time of manufacturing of products or of rendering of offerings or different traits of products or offerings.’ Since the expression ‘Magic Masala’ describes the flavor of the noodles, it can't be taken into consideration a sub-logo and consequently no proprietary declare can lie withinside the disputed expression. Further, for the reason that term ‘Magic’ and ‘Masala’ one by one or even collectively had been used time and again within side the advertising of numerous different FMCG goods, the maximum not unusual place instance being Lays’ Magic Masala chips, those phrases have end up not unusualplace and laudatory within side the industry.
Justice C. Saravan disregarded the petition and referred to in favour of Nestle that ‘magic’ or ‘masala’ are not unusual place phrases within side the Indian meals industry, and no person can declare monopoly over the same. The courtroom docket additionally located that due to the fact those phrases are laudatory, no malicious rationale may be gleaned from the defendant’s moves and taken into consideration Nestle’s utilization of ‘magical masala’ as valid adoption.
Since the term has been used as a flavor descriptor, it has no distinctiveness. Further, it falls within the grounds of refusal to register a trademark as provided under Section 9 of the Trademark Act, 1999. It states that if a mark is with out any distinguishing feature, defines a feature of the product best or represents standard language, it can not be registered as a legitimate trademark. This increases questions about the validity of the trademark and a healthy for passing off will become doubtful. Further, it proves that not unusualplace and laudatory phrases can not be monopolized. The identical changed into held withinside the case of Ram Rakhpal v. Amrit Dhara Pharmacy and Ors, where the court opined that those laudatory terms or common English words were not capable of being distinctive and cannot be monopolized by a single entity. An ordinary laudatory epithet must be open to all to use.
This long-standing agreement sets clear rules of thumb for brands to follow. Do not use bright terms when branding. In my view, the Madras High Court made justice in interpreting the relevant provisions and ruled faithfully to the text of the law. It is a historical judgment in itself, and the case emphasizes Mark's unique character. In this case, in order for the ITC to win, it is necessary to develop a second meaning of the term and establish an uninterrupted use of the term over a long period of time. It makes sense for the court to uphold Nestlé's allegations, as the ITC cannot do so either. The only other mistake I see in the correct statement is the trademark registration debate. The debate about the brand seems pointless because the cause is a necessities of death.
Author- Alisha Dargar
United world School of Law, Gandhinagar, Gujarat