Trademarks are not monopolies; they are logos or brand names that identify the producers in the marketplace. They increase competition in the market and help in giving better recognition to the company as compared to other companies in the eyes of the customers. In 2009, ‘Bananas’, a generic term was possessed by a US fashion stylist. Later on, terms like Blackberry, Mango and Apple started occupying unique places in the market. It ultimately displaced the meaning of what they represented.
On the one hand, when we use terms like Xerox, which is often substituted by photocopy, we seldom realize that these are trademarked names of a trademark for the entire class of the product. For example, ‘Ching’s Noodles’ is not a generic term, but noodles are a generic term. Judicial developments have been against providing trademark protection to generic terms.
Generic Terms
The fight started in 2013 when ITC filed a case against Nestle over the use of the term ‘Magic Masala’. Madras High Court held that the term ‘Magic’ and ‘Magical’ are generic terms in the food industry. Moreover, the expression was never intended to use it as a trademark or a sub-brand. The court observed that ‘Magic Masala’ is a suggestive trademark and it cannot be considered as descriptive. It was also added by the court that Lays was the first to adopt the ‘Magic Masala’ expression. Masala is a generic term and used for describing spices or mixture of spices. Thus, no monopoly can be established. It was a term which was to use as a flavour.
In 2013, the Madras High court faced a similar question in Mr. A.D. Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited Where the issue revolved around the word “Aachi”. The court dismissed the suit and stated that “Aachi” when translated means grandmother who is ‘of general use’. In, Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd, the Delhi court dismissed the suit for allowing trademark to the term ‘Krishna’ as the term is ubiquitous and it does not provide any distinctiveness.
Distinctiveness means that the usage of the term should remind people of the product’s source. The term ‘Krishna’ will not make one associate with milk products unlike ‘Just do it’ which reminds people of Nike.
Court’s Observations
The court Observed in ITC Limited vs Nestle Limited that ITC had used the term in a laudatory manner and a laudatory title cannot be a monopoly or any protection. And, further held that neither the plaintiff nor the defendant could claim a monopoly over the term Magic Masala. The council argued for the plaintiff that the expression ‘Magic Masala’ became distinctive over the period and was immediately identified by the consumers. It was also submitted that ‘Magic Masala’ enjoyed immense reputation and goodwill, which got the brand huge success and turnover.
Further Arguments
They argued that 2-minute Maggi Noodles had enjoyed a monopoly in the early 80s and introducing Maggi Magical Masala was just another variant to trade the reputation and goodwill of the plaintiff. The defendant argued that the term ‘Magic Masala’ is ubiquitous and therefore cannot be entitled to trademark.
Generic terms or marks provide a descriptive quality of the product. They cannot confer any proprietary rights to the person even if it is promoted and projected as a trademark. According to section 9 (1) (b)of the Trademark Act, generic terms can never be registered. Proprietors who choose words which are not distinctive run the risk of such words to be used by others. Law cannot protect them, and they are often left with no remedy. Thus, before making an application for a mark to get established as a trade connection, producers are expected to choose words which are fanciful, arbitrary and suggestive of their products or services. If the mark is suggestive, then it is required to pass the test of imagination for getting protected under law.
In Stix Products Inc vs United Merchants &Mfrs Inc., it was observed that a term is suggestive if imagination, thought, and perception is required to conclude the nature of the goods. For example, Reebok and Bata for footwear, Vivel and Liril for soap appear to be arbitrary words and therefore command protection of higher degree.
The Difference
The same is not true about the expression ‘Magic Masala’. Under the Trademark Act, application for registration is compulsory. If the expression is not protected or registered, then such proprietor cannot file a suit for its infringement, in Godrej Philips India Ltd. Vs Girnar food & Beverage (P) Ltd it, was held that the expression ‘SUPER CUP’ was descriptive and laudatory of the goods, therefore not entitled to get an order for an injunction. However, a descriptive term is entitled to protection if it has got a secondary meaning identifying the product.
The expression ‘Magic Masala’ is at best suggestive and not descriptive as there is no masala which is called ‘Magic’ in the Indian cuisine. The plaintiff’s counsel submitted that by using the expression ‘Magic Masala,’ the defendant has tried to pass-off the product of the plaintiff. However, in such an action plaintiff is required to establish that their mark is distinctive.
Conclusion
The court observed it from the evidence on record that Nestle has used the term ‘Magic’ for some of its products though not instant noodles. For example, ‘Dal Magic’, ‘Maggi Magic cubes’, Maggie real Magic’ much before that of ITC Yippee. The word magic is also very commonly used, and it was adopted first by Lays along with its other flavours. Both Yippee and Lays have similar target groups and have the same consumers. So, the adoption of the expression by Nestle stemmed from inspiration from other products in the industry. And they were not only used by the defendant.
Such adoption by the defendant cannot be said to be mala fide, and there is no reason to explain as to why Nestle Maggi did not use the term before. Taste of masala is peculiar to a geographic location and varies from place to place. Hence, it can never be trademarked. It was not open for Sunfeast Yippee to claim a monopoly over the expression. They called their flavours‘ Masala Magic’.
This Article is written by Ayush Gupta, 4th Year Student, NMIMS School of Law.
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