Dispute over use of “Magic Masala” and “Magical Masala” has come to an end

Introduction

The Madras High Court (“MHC”) has recently elucidated a seven (7) year long legal battle over use of “Magic Masala” and “Magical Masala” and has made it clear that no person can claim any monopoly right over laudatory expressions like “Magic” or “Magical” or their derivative as they are well common to the trade and use of similar expressions would not amount to passing off under the Trademarks Act, 1999 (“TMA”).

Background

The suit for permanent injunction and passing off has been filed by the ITC Limited (“Plaintiff”) in the year 2013 against the Nestle India Limited (“Defendant”) restraining the Defendant to use the word mark “Magical Masala” or any mark similar to Plaintiff’s mark. Plaintiff has been using the expression “Magic Masala” for its noodle products from the year 2010 onwards and alleged that the Defendant adopted similar expression “Magical Masala” for its instant noodles brand “Maggi” in the year 2013 with an intention to dilute the Plaintiff’s proprietary rights and goodwill associated with it which amounts to passing off under the TMA.

The MHC passed an interim order in the year 2015 which restrained the Defendant from using the mark “Magical Masala” or any deceptively similar mark till the disposal of the suit.

MHC’s Observation

The MHC observed that the word “Magic Masala” has been used by the Plaintiff to describe the characteristics and flavour of the masala and is not a registered trademark. Hence, use thereof is incapable of conferring any proprietary right in law and hence no statutory right can be claimed by the Plaintiff. The MHC further held that the onus is on the Plaintiff to establish that it has a proprietary right and the following three factors are ad hoc to be present in the claim of passing off mainly - (i) mark has been used prior in point of time by Plaintiff ; (ii) mark has been used to distinguish the product from similar words and not used to describe the quality of the product; and (iii) upon extensive and exclusive use of trademark, it has acquired such level of distinctiveness and goodwill that come to identify the source and origin of instant noodles of the Plaintiff .

The MHC held that the word “Magic” is not a coined or invented word and used widely in the food and cosmetic Industry. It is inherently not a distinctive word and cannot be said to be adopted by Plaintiff to distinguish its product sold by them.

The MHC opined that the expression “Masala” signifies a mixture of ground spices used in Indian cooking and is a generic term to call a mix of different spices and used across the country irrespective of the culture, zone and geographical region. Being a generic name for describing mixture of spices in Indian language, it could never be appropriated.

The MHC also analysed the judgment passed by the Supreme Court in Godfrey Philips India Ltd vs Girnar Food & Beverages (P) Ltd ((2004) 5 SCC 257) and found that the “descriptive term” which clearly conveys information about the ingredients, qualities and characteristics of the product or service are not subject to registration/protection but the same qualifies for protection if it connotes secondary meaning, contrarily “suggestive marks” which indirectly suggest the quality and ingredients of the product are subject to registration and protection under the TMA.

The MHC further held that the expression “Magic Masala” has been firstly adopted by “Lays” for their potato chips which was used to name the flavour along with some of its other flavours.

Conclusion

The MHC while dismissing the suit clarified that the expression “Magic Masala” has been used in a laudatory manner to commend the “Masala” and hence the laudatory epithet word are not subject to monopoly or protection under the TMA.

The MHC also opined that if the plaintiff would have filed a trademark application to register the expression “Magic Masala” as a word mark, the same would have been rejected being generic term by the ‘Trademark Registry’ under section 9 of the TMA.

This update is by Harshita Sharma, Advocate & Associate at Agarwal Jetley & Co., Advocates & Solicitors. Contact: Email: harshitasharma@agarwaljetley.com or Mob: (+91) - 99226 28447