The Hon’ble High Court of Madras on 10.06.2020 dismissed a suit filed by ITC Limited, seeking a permanent injunction order from the Hon’ble Court on Nestle India Limited and thereby restraining them from using the words “MAGICAL MASALA” which is used since 2013 in respect to their noodles product, viz. Maggi, contending that ITC had already been using a similar mark namely, “MAGIC MASALA” for their noodle product, i.e. Sunfeast Yippee since the year 2010.
The Plaintiff sought for the Defendant to destroy all goods ranging from containers, container pack labels to any other material bearing the mark “MAGICAL MASALA” which is deceptively similar to the Plaintiff’s “MAGIC MASALA”. It was further prayed to pass a decree to render profits made by use of the offending mark “MAGICAL MASALA” by the Defendant and also pay to the Plaintiff as compensatory and punitive damages a sum of Rs.10,05,000/- (Rupees Ten Lakhs and Five Thousand Only).
The Plaintiff submitted that the general public associated the term “MAGIC MASALA” with their noodle product namely, Sunfeast Yippee Noodles and had cornered about 12.5% of the market share in the instant noodle segment. According to the Plaintiff, it was due to their stupendous success that led the Defendant to “trade on the goodwill of the Plaintiff” and thereby launch “MAGICAL MASALA” as a sub- brand. They further stated that by using the name “MAGICAL MASALA” the Defendant intended to dilute the Plaintiff’s proprietary rights over “MAGIC MASALA”
In response to the Plaintiff, the Defendant submitted that “MAGIC MASALA” was a non-existent brand and that the term “MAGICAL MASALA” was only used as a flavour descriptor in its product. Furthermore, the Defendant had also used the term “MAGIC” for some of its products much prior to the Plaintiff and hence could not be restrained from using the term “MAGICAL MASALA” in view of Section 35 of the Trade Marks Act, 1999.
After taking note of both the parties and the merits of the case, the Hon’ble High Court stated that even after having phonetic similarity between the two terms, i.e. “MAGIC MASALA” and “MAGICAL MASALA”, they were incapable of being monopolised.
The Hon’ble High Court dismissed the present suit negating the Plaintiff’s contention that the Defendant had used the name “MAGICAL MASALA” to misrepresent or to ride upon the alleged reputation and goodwill of the Plaintiff.
Justice C. Saravanan stated that, even if the Plaintiff had filed a trademark application to register the term “MAGIC MASALA” as a word mark, it would have been rejected by the Trade Mark Registry under Section 9 of the Trade Marks Act, 1999. Although agreeing to the fact that the Defendant had used the term “MAGICAL MASALA” getting inspired from the Plaintiff’s “MAGIC MASALA” and its subsequent success, the Plaintiff could not seek any advantage in the present suit.
It was further added by the Hon’ble High Court that there was no visual or ocular similarity between the two wrappers, i.e. the Plaintiff’s Sunfeast Yippee Noodles and the Defendant’s Maggi, hence there being no scope to infer passing-off from a ocular or visual comparison of the two labels.