No monopoly rights
Putting an end to an over seven-year-long legal dispute between ITC’s Sun feast Yippee! and Nestle India’s Maggi noodles, the Madras High Court has ruled that to promote their noodles brands neither of them can claim a monopoly over the words ‘Magic Masala’ and ‘Magical Masala’ to describe their products. ITC began the legal battle back in 2013, after Nestle began using ‘Maggi Xtra-delicious Magical Masala’ to market its noodles framed charges against Nestle. Both the companies cannot claim the monopoly over the laudatory words ‘Magic’ and ‘Magical’.
“Justice C. Saravanan said they are general English and Indian words and both the companies cannot claim the control over them as these words are laudatory and common to the trade, nobody can claim an exclusive right over their use. Therefore, it is incompetent of being monopolized by any trader. He also added that inroads made by ITC in the instant noodles segment with the use of the expression Magic Masala were perhaps on account of the attractive pricing of its instant noodles as compared to Nestle. It was also because ITC has a very strong market and brand presence.”
Therefore, both the companies cannot claim the monopoly over the laudatory words ‘Magic’ and ‘Magical’. Also, he said suggestive expressions such as ‘Magic Masala’ used in Sun feast Yipee noodles since 2010 could have become a distinctive mark entitled for protection & monopoly, only if it had been used uninterrupted for a long number of years. Whereas in the present case, Nestle had pre-empted such a move by using ‘Magical Masala’ in Maggi in 2013 itself.
‘Magic Masala’ is not a registered trademark. In fact, if ITC had filed a trademark application to register the expression “Magic Masala” as a wordmark, it would have been rejected by the trademark registry under Section 9 of the Trade Marks Act, 1999. The court observed, Both the companies cannot claim the monopoly over the laudatory words ‘Magic’, ‘Magical’ along with the common word ‘Masala’ to the exclusion of one another. It was also observed that the expression ‘Magic Masala’ is commonly used in the food and cosmetic industry. It is not a coined or invented word.
It is inherently not a distinctive word or a descriptive term that directly and clearly conveys information about ingredients, qualities, and characteristics of the product or services are not protectable at the first instance but may qualify for protection if it has assumed a secondary meaning and identifies as a particular product or as being from a particular source It, in fact, observed that the expression was first adopted by Lays for their potato chips. It is a general name for describing the mixture of spices in the majority of the Indian languages. Therefore, it can never be appropriated.
ITC, in its petition in 2013, claimed that the noodles with the expression Magic Masala was a runaway success and had cornered about 12.5 per cent of the market share in the instant noodles segment within three years. It entered the instant noodles market with two variants – Yippee! Magic Masala, and Classic Masala. ITC said that it had been selling Sunfeast Yippee! Noodles in the ‘Magic Masala’ variety since 2010. It, therefore, filed a suit in the high court demanding an injunction against Nestle from using ‘Magic Masala’ or any other similar term for its product. It had also asked for damages of over 10 lakhs.
Nestle argued that both the expressions have been used as a flavour descriptor and therefore are incapable of being protected. The term ‘Masala’ implied a blend of ground flavours utilized in Indian cooking and it couldn’t be appropriated. Neither the plaintiff party nor the respondent could guarantee a monopoly over the articulation ‘Magic’ or ‘Magical’ alongside the regular word ‘Masala’.
ITC alleged that Nestle India copied the phrase by slightly tweaking it as saying ‘magical’ instead of ‘magic’. By doing this, it said, the company wanted to “cheat unwary and gullible customers” into buying their product instead of ITC’s.
The court also noted that ITC did not intend on using ‘Magic Masala’ as a brand or sub-brand. It said that the brand was ‘Sun feast Yippee!’ and that ‘Magic Masala’ was only used to describe the flavour and overall colour scheme, layout, style and get up of the two products were dissimilar. Further, after comparing the wrappers of Sun feast Yippee Noodles Magic Masala & Maggi Xtra delicious Magical Masala, the Judge found them to be completely distinctive without any scope for confusion between them. As there is no visual or ocular similarity between the two wrappers, there is no scope to infer passing-off from an ocular or visual comparison of the two labels. However, such adoption of the expression cannot be said to be mala fide.
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