In the passing off case of ITC Limited v. Nestle India Limited, C.S.No.231 of 2013, the Hon’ble High Court of Madras held that, no entity can claim monopoly over laudatory words like ‘Magic’ or ‘Magical’, and thus dismissed the case in favour of Nestle.
The entire suit is based on adoption of the term ‘Magical Masala’. The story dates back to 2013, when Nestle began marketing it products under the name ‘Maggixtra -delicious Magical Masala’. ITC had introduced its instant noodles – “Sunfeast Yippee! Noodles”, in 2 varieties: ‘Classic Masala’ & ‘Magic Masala’ in 2010. ITC argued that, ‘Magic Masala’ became a source identifier and had gained immense goodwill and popularity amongst the consumers. ITC submitted that, Nestle had purposely tweaked its mark ‘Magic Masala’ to ‘Magical Masala’ in an attempt to ride upon the goodwill of ITC and pass-off its product as that of ITC to the customers. Nestle argued saying that its trademark was ‘Maggi’ and the term ‘Magical Masala’ was only used as a “flavour descriptor” of the instant noodles.
Nestle submitted that, ‘Magical’ & ‘Masala’ were terms common to trade and thus no single entity could claim proprietary rights over them. It went on to explain that, the word ‘Magic’ means ‘marvellous’ or ‘exciting’, and the word ‘Masala’ refers to a mix of spice for food preparation known to Indian culinary. Thus, when used together, one cannot claim exclusive rights, since the laudatory word ‘Magic’ is being used to describe the ‘Masala’. Nestle claimed that, its use of the term ‘Magical Masala’ was merely describing the ‘wonderful/excellent’ taste the masala will bring to the bland noodles in the pack.
Nestle also submitted that, it had used the term ‘Magic’ for non-noodle food products, prior to ITC and thus, its claim of proprietary rights over the term is baseless. The two brands are ‘Sunfeast Yippee’ and ‘Maggi’ and not ‘Magic Masala’ and ‘Magical Masala’.
The Court concurred with the arguments put forth by Nestle and observed that, ‘Magic Masala’ was in fact adopted by ‘Lays’ as a flavour descriptor even before its adoption by ITC. The Court also observed that, ITC had never intended to use ‘Magic Masala’ as a trade name since there was no Trademark application filed to that effect. The Court also mentioned that, had a TM application been filed, the mark would have been subjected to Section 9 of the Trade Marks Act, 1999 and would have been rejected by the Trade Marks Registry.
The Court while stating that, an action of passing off also takes into consideration the layout, packaging of the products, compared the products of ITC and Nestle as below:
The Court noted that “the plaintiff 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.” The Court thus proceeded to dismiss ITC’s case, concluding that “neither the plaintiff nor the defendant can dissect a portion of a label and claim monopoly over it. Thus, the plaintiff cannot claim monopoly over the expression 'Magic Masala'.”