For instance, a client approaches to get the word “Diamond Factory” registered as trademark under the class containing jewellery and related goods. The question that would arise is whether it is possible to get an exclusive right to exploit words which are generic/ descriptive in nature?
The answer lies in basic principle that is applicable while getting a mark registered. The principle is that the mark shall not be descriptive in nature and should not be a generic term which describes the type of product or service the applicant is involved in.
According to Sections 9 and 11 of the Trademarks Act 1999, only those trademarks that are sufficiently distinctive enough to differentiate the goods of one person from those of others are capable of registration. Those marks which are devoid of distinctive character, which consist of designation which are descriptive, which are common in language or established practise of trade do not qualify for registration as a trademark and fall within the absolute grounds for refusal while filing an application for trademark registration.
The prolonged case ‘ITC limited v Nestle India Ltd’ popularly known as ‘Magic Masala case’ was finally dismissed which ended a seven-year old battle for using the words “Magical Masala” along with its brand name. The aforesaid suit of passing off was filed by ITC Limited, the owner of Yippee Noodles against the defendant company, Nestle India Ltd., the owner of Maggie Noodles. The dispute arose back in 2013 when Maggie started using the term “Magical Masala” along with its brand name “Maggixtra-delicious Magical Masala”while the Plaintiff was using the term“Magic Masala” on its product Sunfeast Yippee Noodles.
The plaintiffs contended that the the mark was it’s sub brand and so it formed anessential feature of the product, owing to its recognition. The defendant had a malafide intention to use the mark which could reduce the goodwill and proprietary rights of the plaintiff.
The defendants contended that the two words ‘Magic’ and ‘Masala’ are generic words and common to trade. They do not posses any distinctiveness and thus, cannot be monopolized. The Plaintiffs had been using different names for different flavours namely, ‘Classic Masala’, ‘Magic Masala’ and ‘Chinese Masala’. Whereas, the Defendant had adopted the words ‘Magic’ and ‘Masala’ from Defendant’s allied flavours of food products, namely, ‘Maggi Dal Magic’, ‘Maggi Masala Magic Cubes’ and ‘Masala- Ae-Magic’ etc.
To succeed in a passing-off action , it is pertinent for the Plaintiff to establish that on account of prior adoption and extensive commercial use as trade mark, ‘Magic Masala’ has acquired distinctiveness, awarding them monopoly over the mark.
11 issues were framed by the Hon’ble Court which are clubbed as under-
· Whether the Plaintiff's mark MAGIC MASALA is inherently distinctive or is descriptive but has acquired?
· Whether the Plaintiff has made out a prima facie case for grant of injunction? Whether the defendant is the prior user of the expression “Magic” in the flavour world in relation to food category?
· Whether the expression Magic/Magical is common to the trade in relation to flavour variants in the food category?
A single-judge bench of Justice C. Saravanan contended that the adoption of the word “Magic” by the plaintiff was inspired from the use of the said word across the industry and also from some of the food products of the defendant. Thus, it would be fair to conclude that the expression “Magic Masala” was inspired from both the common words viz. “Magic” and “Masala” as they were not only used by the defendant for some of its of products as mentioned above but also from other products in the food and cosmetic industry.
The adoption of the expression “Magical Masala” by the defendant was inspired not only from the words “Magic” and “Magical” which are common to the trade but also from some of its own products. It was therefore certainly inspired from adoption of the expression “Magic Masala” by the plaintiff in 2010 for its “Sunfeast Yippee!” noodles. However, such adoption cannot be said to be malafide. It was a legitimate adoption by the defendant as no person can appropriate common and laudatory words and the defendant has used the expression “Magic” prior in time.
The fact that no trademark application was filed by the plaintiff to register the aforesaid expression “Magic Masala” as word mark also shows that the said expression was not intended to be used as trademark or a sub-brand by the plaintiff.
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 by the Court.