• Mallika Tewari

Magical But Not Fanciful Enough!

Recently Madras HC dismissed a suit for injunction filed by ITC Limited and ended a 7-year-old IP battle between Nestle and ITC over the term ‘Magic Masala’. ITC, the owner of Sunfeast Yipee brand of noodles, sought a permanent injunction against rivals Nestle India using the expression ‘Magic Masala’ for their own noodles, and claimed that such use amounted to “passing off”. However, the High Court held that the terms ‘Magic’ and ‘Masala’ were used widely by many in the FMCG industry and these words are common laudatory words and such laudatory epithet cannot be given monopoly or protection.


In this case, the words ‘Magic’ & “masala’ come under the definition of Laudatory marks or ‘Laudatory Epithets’. Laudatory Epithets are words, usually adjectives, which describe the quality or attribute of goods with praise. Such words do not get trademark protection and do not result in proprietary rights. In the case of Caterpillar Inc. Vs. Mehtab Ahmed and Others, Delhi HC included 'Laudatory Epithets' in the category of words for which trademark is usually sought.


The other categories are as follows:

1. Generic Words: These words have dictionary meaning and there is no separately specific or special meaning attached to them. It is simply a word that identifies the type of product or service involved. Such words do not receive any trademark protection. However, if generic words have acquired a distinctive character in relation to the goods or services which the company is offering, they can also receive trademark protection. Commonly used words are not considered if that mark does not have any direct reference to the character or quality of the service, E.g. Amazon is not inherently generic for the services it offers, thus it enjoys trademark protection.


2. Directly Descriptive Words: These words describe the attribute or character of goods or services without praising them. The difference between ‘Directly Descriptive words’ and ‘Laudatory Epithets’ is that the former lacks the element of laudation.


3. Indirectly Descriptive Words: These words have a remote or indirect reference to the attributes of goods. Such words can be trademarked.


4. Some marks are made up of arbitrary or fanciful words that have no relation to the goods offered, due to this distinct quality such words are granted trademark protection.


5. Invented Words: These words are a result of imagination they do not have any meaning. Due to their inherently distinctive nature, they are protected.


Thus, laudatory and generic words cannot be treated as trademarks. In ITC v. Nestle case, ITC started using the words “Magic Masala’ before Nestle, but they were not able to establish a secondary meaning with this mark. Their contention that Nestle tried to pass their noodles off was also not accepted because the adoption of these words was not mala fide. Madras HC accepted it as legitimate because such common words cannot be monopolized. Also, ‘Magic’ and ‘masala’ were commonly used in the FMCG industry, of which these brands are a part.

As per Section 9(1)(c) of The Trade Marks Act, 1999, registration can be refused for the trademarks: “which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade, shall not be registered: Provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trademark”.

In this case, ITC would have received protection if they would have proved that through years of operating in the market, the words ‘Magic Masala’ have acquired a second meaning among customers with respect to ‘Yipee Noodles’.



As established in the case of Inwood Laboratories, Inc. v. Ives Laboratories, a mark acquires secondary meaning when “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself ” i.e. when the word and the business become synonymous in the minds of consumers, and it overshadows the word’s original meaning. In order to prove this, direct evidence i.e. consumer survey and testimonies, and circumstantial evidence like period & manner of mark’s use and sales and advertising expenses over the promotion of that mark are used.


Like laudatory epithets, generic words and descriptive words too have an exception through which trademark protection can be achieved. If these words are in a combination that is distinctive then they can be protected. This was further confirmed by the European Court of Justice in the case of Proctor & Gamble v. Office of Harmonisation in the International Market (OHIM). It was held that the word ‘ BABY-DRY’ is eligible for trademark registration even though each of the two words in the combination may form part of expressions used in everyday speech to describe the function of diapers, their 'syntactically unusual' juxtaposition is not a familiar English expression with respect to diapers, hence the "BABY-DRY" mark was sufficiently distinctive and could be trademark subject matter.


The message is clear, creativity is what meets the requirement when it comes to bagging IP rights. No party can use generic, common, laudatory, or descriptive words exclusively. Even a minor change through an innovative combination of simple words can set their mark apart. Distinctness is the soul of trademark rights, the motive behind trademark protection is to incentivize businesses that go the extra mile to create a novel image of their brand. Thus, words of common usage i.e. generic and laudatory words are not usually accorded trademark protection.


References:

  1. Manisha Singh, Distinctiveness through Secondary Meaning, MONDAQ, (Accessed on August 20, 2020, 13:45 PM) https://www.mondaq.com/india/trademark/39320/distinctiveness-through-secondary-meaning

  2. HC ends 7-year battle over the use of ‘Magical Masala’ in Maggi Noodles, LATEST LAWS, (Accessed on August 19, 2020, 15:00 PM) https://www.latestlaws.com/latest-news/hc-ends-7-year-battle-over-the-use-of-magical-masala-in-maggi-noodles/

  3. Rajni Sinha, Descriptive and Laudatory Trademark, RAJNISINHABLOG (Accessed on August 19, 2020, 11 AM) https://rajnisinhablog.wordpress.com/2015/12/29/descriptive-and-laudatory-trade-mark/

  4. The Trademarks Act, 1999, No. 47 (India).

  5. Inwood Laboratories, Inc. v. Ives Laboratories, (1982) 456 U.S. 844, 72 L. Ed. 2d 606.

  6. Proctor & Gamble v. Office of Harmonisation in the International Market (OHIM), (2002).

  7. Caterpillar Inc. Vs. Mehtab Ahmed and Others, (2002) 99 (2002) DLT 678 (India).

  8. M/s ITC Limited v. Nestle India, (2020) Mad 1158 (India).


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