The Hon’ble Mr. Justice C. Saravanan of Hon’ble High Court of Madras in Judgment dated 10thJune 2020 in the matter of M/s. ITC Limited, vs Nestle India Limited held that “the laudatory word “Magic” and the word “Masala”, commonly used for Indian spices cannot be monopolized”.
The dispute arose between ITC Limited (Plaintiff) and Nestle India Limited (Defendant) in regards to the usage of word “Magic” and “Masala”. In the year 2010, the Plaintiff introduced 2 varieties of noodles, namely, Yippee- Magic Masala and classic Masala. Further, in the year 2013, the defendant company have used the word “Magical Masala”. The Plaintiff approached the Hon’ble Court under Order 7 Rule 1 R/w with Sections 27, 134 & 135 of the Trade Marks Act, 1999 on the ground that the word Magic Masala forms the predominant feature of Plaintiffs’ trade mark and same cannot be used by the Defendant.
The learned counsel for the Plaintiff submitted that the word “Magic Masala” has identified as distinctive and got popularity in the area of noodle business. Due to the quality and affordability, the noodle bearing the aforesaid expression “Magic Masala” enjoyed reputation and immense goodwill in the market. Therefore, usage of the words amounts to passing off.
On the other hand, learned counsel for the Defendant submitted that the word “Magic Masala” is a description for the flavour used in the noodles. Further, Defendant contended that the word “Magic” has been used by them prior to plaintiff in other products of Nestle. Further, he contended that as per Section 35 of Trade Marks Act, 1999 Plaintiff cannot restrain Defendant to use word “Magical”. On the other word, the word Masala is commonly used for Indian spices. Therefore, the Magic and Masala are not the distinctive words and same can be used by the Defendant.
After hearing both the parties, the Hon’ble High Court stated that the word “Magic” and “Magical” is common terminologies used in the food industry. Therefore, Plaintiff/Defendant cannot claim monopoly over the respective laudatory words “Magic” or “Magical”. Further, there are no visual or ocular similarities between two labels. The word Magic which is laudatory and the word Masala used for describing the spices in India, cannot attain distinctiveness. It was also noted that the Plaintiffs’ had no intention to use “Magic Masala” as a word mark, the idea of adoption word is merely to describe the flavour of noodles. Therefore, the usage of the words by the Defendant is not violation of Trade Mark. Further, Hon’ble High Court concluded stating that the word Magic and Masala cannot be monopolized.
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