ITC not Monopolizing ‘Magic’ in “Magic Masala

A seven-year-old legal dispute between two FMCGs was finally disposed of by the Madras High Court on June 10, 2020. The suit was filed by ITC (“Plaintiff”), a well-known company originally engaged in the tobacco business which 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 to claim that Nestle (“Defendant”), a pioneer in the instant noodles category, has been using the expression “Magical Masala” for its instant noodles brand Maggi since 2013 and so had been passing off their product, as against the brand Sunfeast Yippee! which had adopted the same expression in the year 2010. A single-judge bench of Justice C. Saravanan, after exhaustive scrutiny of arguments and evidence, held that there was no passing off by the Defendant and accordingly dismissed the suit.

Key Observations of the Court

  1. The term ‘Magic Masala’ as used by the Plaintiff, individually and collectively is common to the trade and thus, laudatory and descriptive in nature and cannot be subjected to any proprietary right by any member of the trade to the exclusion of others. The court expressed that the mark would have been held as a distinctive mark and could, in turn, qualify for protection and monopoly, if it had been able to show that its products or services had been in commercial use for a long and uninterrupted period, to the exclusion of others, thus acquiring secondary significance and superior ‘sub-brand’ status, such that consumers associate the term with goods originating from them exclusively and no-one else;
  2. If the plaintiff had filed a trademark application to register the expression ‘Magic Masala’ as a wordmark, it would have been rejected by the Indian Trade Mark Registry under Section 9 of the Trade Marks Act, 1999 (which prohibits to register generic names). The expression ‘Masala’ signifies a mixture of ground spices used in Indian cooking and as such this laudatory epithet cannot be accorded monopoly or protection;
  3. The court also observed that Nestle was the prior user and adopter of the expression ‘Magic’ (based on the evidence adduced) and the expression ‘Magic Masala’ was first adopted by Lays for their potato chips. Nestle argued that both the expressions “Magic Masala” and “Magical Masala” have been used both by the plaintiff and the defendant as a flavour descriptor and therefore, are incapable of being appropriated by the plaintiff alone and thus, cannot be monopolized by any trader; 

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