ITC Vs Nestle India Limited (Madras High Court)
The dispute between the ITC (Plaintiff) and the Nestle India Limited 9 defendant) in the present suit arises on account of adoption of the expression ‘Magical Masala’ by the defendant for marketing its instant noodles viz.’ Maggixtra -delicious Magical Masala’ in 2013. The plaintiff had earlier introduced Sunfeast Yippee! noodles in two varieties, namely, “Classic Masala” and “Magic Masala” in 2010.
The word “Magic” is laudatory. It is incapable of being appropriated by the plaintiff. 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.
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”.
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 plaintiff’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.
The expression “Magic Masala” and “Magical Masala” are not adapted to distinguish the noodles sold either by the plaintiff or the defendant. They are adapted only to distinguish different flavours offered by them with the brand “Sunfeast Yippee!”.
Therefore, even though there is a phonetic similarity between the word “Magic” used by the plaintiff and the word “Magical” used by the defendant, nevertheless they are incapable of being monopolised as they are not only laudatory but also common to the Issue Nos. 1 & 5 as para-phrased in paragraph No.193 is thus answered against the plaintiff.
Further, from a reading of the in-house literature of the plaintiff, namely, the Annual Reports for the years 2009 to 2011 [Exhibit D18], it is quite clear that the plaintiff itself did not conceive the expression “ Magic Masala” as a brand or sub-brand as was argued. Their brand was projected as “Sunfeast Yippee!” for noodles. Initially, it was introduced in two variants, namely “Classic Masala” and “Magic Masala” in 2010 and later added another variant “Chinese Masala”. Similarly, Exhibit D16 (printouts of the plaintiff’s web page under the heading “You ask we answer”) and Exhibit D17 (printout of the facebook page relating to “Sunfeast Yippee! noodles”) show that the plaintiff projected its brand “Sunfeast Yippee!” and not as “Magic Masala”. Thus, “Magic Masala”, “Classic Masala” and “Chinese Masala” were used to describe the name of the flavour and not the sub-brand. Issue No. 7 is answered accordingly.
Observation contained herein will not be to the prejudice of the plaintiffs’ right to have the respective labels containing any of the expression “Magic Masala”, “Chinese Masala” and/or “Classic Masala” considered for registration under the Trade Marks Act, 1999 subject to acceptance of a disclaimer to the expression “Magic Masala”, “Chinese Masala” and “Classic Masala” by the plaintiff by the plaintiff.
On comparison of two wrappers in column below, it is evident there is no scope for concluding there could be any passing-off by the defendant.
Overall colour scheme, layout, style and overall the get-up of the two wrappers i.e. of the plaintiff’s “Sunfeast Yippee! noodles” bearing the expression “Magic Masala” for its instant noodle and the defendant’s “Maggi Xtra-delicious Magical Masala” are different. There is no scope for confusion.
Respective labels of the plaintiff and defendant are quite different in overall colour, scheme, get up, layout and trade dress. Each label, i.e. Exhibits P19 and P21 which have been reproduced in this Judgment, are a separate trade mark within the meaning of Section 2(zb) of the Trade Marks Act, 1999 and qualify for protection as whole.
The competing brands viz. “Sunfeast Yippee!” of the plaintiff and “Maggi” of the defendant are completely different from each other. Under law, there is also no scope to dissect the plaintiff’s aforesaid label to conclude that the defendant has copied the plaintiff’s sub-brand “Magic Masala” as it was never conceived as brand or trademark by the plaintiff. Therefore, it cannot be said that there is a misrepresentation by the defendant.
Though the defendant is the undisputed market leader in the instant noodles segment and had commanded about 75% of the market share in the instant noodles segment, it must of felt threatened by the plaintiff’s rapid inroad into the food industry particularly in the instant noodle and therefore decided to use “Magical Masala” in two wrappers or packages.
It will be therefore wrong to hold that the defendant has made any misrepresentation to ride upon the alleged reputation and goodwill of the plaintiff while using the expression “Magical Masala”. Had the defendant not used the words “Magical Masala”, plaintiff could have perhaps at a later point of time made a claim that the expression “Magic Masala” had become distinctive and therefore was entitled for a monopoly. However, the defendant has intervened at the earliest occasion.
In fact, if the plaintiff 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.
Though the adoption of the expression “Magical Masala” by the defendant is inspired from the adoption of the expression “Magic Masala” and success of the plaintiff, the plaintiff cannot claim any advantage for the reasons recorded. In my view, the plaintiff is not entitled to succeed in a passing-off as there is no passing-off by the defendant.
As there is no visual or ocular similarity between the two wrappers, there is no scope to infer passing-off from a ocular or visual comparison of the two labels. Accordingly, Issue Nos. 2 & 6 which have been re-phrased in paragraph No.194 are answered against the plaintiff.
In roads made by the plaintiff in the instant noodle sector with the use of the expression “Magic Masala” was perhaps on account of the attractive pricing of Rs.10/- per pack of instant noodles as compared to Rs.15/- by the defendant and on account of the fact that the plaintiff has very strong market and brand presence under its well known brand “ITC”.
FULL TEXT OF THE HIGH COURT ORDER /JUDGEMENT
The plaintiff has filed the present suit for the following reliefs:-
i. a permanent injunction restraining the defendant by themselves, their Directors, principal officers, successors-in- business, assigns, servants, agents, distributors, retailers, stockiests, advertisers or any one claiming through them from in any manner passing off or enabling others to pass off their products i.e. noodles as and for the plaintiff’s noodles by use of the offending mark “Magical Masala” or any mark similar to plaintiff’s mark “Magic Masala” or in any other manner whatsoever;
ii. The defendant be ordered to surrender to plaintiff for the purpose of destruction all goods including containers, cartons packs labels, prints, blocks, dyes, plates, moulds and other material bearing the mark/name “Magical Masala” which is deceptively similar to the plaintiff’s “Magic Masala”;
iii. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of offending mark “Magical Masala” and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after latter have rendered accounts;
iv. The defendant be directed to pay to the plaintiff as compensatory and punitive damages a sum of Rs.10,05,000/- for the acts of passing off committed by them; and
v. for costs of the suit.
2. The plaintiff was represented by P.S.Raman, the learned senior counsel and by Mr.C.Manishanker, the learned senior counsel. They made elaborate submissions on behalf of the plaintiff. They were assisted by the Mr.Arun C.Mohan and Ms.Divya Bhatt of M/s. Arun C.Mohan & Brinda C.Mohan, Advocates, the counsel on record on behalf of the plaintiff.
3. On behalf of the defendant, Hemant Singh, learned counsel made elaborate submissions. He was assisted by Ms.Mamta Jha, and Ms.Gladys Daniel, Advocates, the counsel on record on behalf of the defenant.
4. Plaintiff a well-known company which was originally engaged in the tobacco business but had successfully diversified into Hospitality Industry, Paper & Paper Board Industry, Agri Based Business industry and later forayed into the Fast Moving Consumer Goods Sector (FMCG) in 2010.
5. The dispute between the plaintiff and the defendant in the present suit arises on account of adoption of the expression “Magical Masala” by the defendant for marketing its instant noodles viz.“Maggixtra -delicious Magical Masala” in 2013. The plaintiff had earlier introduced Sunfeast Yippee! noodles in two varieties, namely, “Classic Masala” and “Magic Masala” in 2010.
6. Screen shot of the respective wrappers of the plaintiff and the defendant which were marked as Exhibit Nos.P14 and P21 are reproduced below:-
