GUEST POST- YASH MITTAL- ANALYSING “FLAVOUR” AND “PRODUCT” DESCRIPTORS AS A GROUND FOR PROTECTION UNDER TRADEMARK ACT, 1999 IN THE CONTEXT OF ITC LTD. V. NESTLE INDIA LTD.

0
349

The Author, Yash Mittal, is a Final Year Student at Institute of Law, Nirma University, Ahmedabad.

Recently in ITC Ltd. v. Nestle India Ltd.[i], Yippee Noodles (a product of ITC Ltd.) sued its competitor Maggi (a product of Nestle India Ltd.) , seeking a permanent injunction against Maggi in order to restrain it from using the term “Magical Masala”. The suit challenged adoption of the expression “Magical Masala” by Nestle for marketing its instant noodles, “Maggixtra -delicious Magical Masala”, in 2013. It was averred that Nestlé’s use of the offending mark “Magical Masala” is similar to that of Yippee’s “Magic Masala”, which is diluting the reputation of Yippee and affecting its business due to deceptive use of the term “Magical Masala” by Maggi.

A Single Bench of the Madras High Court comprising of Justice C. Saravanan dismissed the suit of the ITC by observing that firstly, the term “Magical Masala” is a descriptive term and has no distinctiveness attached to it, and thus has no protection under the Trademark Act, 1999, and secondly, there was no act of passing-off by Nestle as there is no secondary meaning attached to the term “Magic Masala” which could establish a proprietary right in favour of ITC.

Descriptive, Distinctive or Suggestive? 

According to Thomas McCarthy[ii], there are two basic categories of distinctive trademarks. Those are:

  1. a) a mark which is distinctive and capable of being protected; and
  2. b) the mark which has acquired distinctiveness through secondary meaning,

Descriptive” words are not inherently distinctive while suggestive, arbitrary and fanciful terms are regarded as being inherently distinctive.[iii]  A mark, which conveys a character or quality of the good, is a descriptive mark. It is an inherently weak mark and is almost incapable of being protected and/or registered unless it has acquired distinctiveness due to its long and continuous use over a period of time to the exclusion of others. Before conceiving a mark to establish a trade connection, a proprietor is expected to choose those marks that are either arbitrary, fanciful and/or at best suggestive of their product/goods/services to market.[iv]

In Stix Products inc. v. United Merchants & Mfrs Inc.[v], Judge Winfield formulated the imagination test by observing that “a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods.” In Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd.[vi], the court held that phrase “SUPER CUP” which was used as a trademark was descriptive and laudatory of the goods of the appellant and, therefore, the appellant was not entitled to any order of injunction. However, it was also observed by the court that if a descriptive mark has attained a secondary meaning then it is entitled to get protection. But in order to attain a secondary meaning, there has to be long and uninterrupted use of the descriptive mark, which often involves an active risk of trademark use by another player in the market. Therefore, it becomes difficult for the courts to rescue such proprietors in order to grant protection under the law.

In the present case, the word “Magic Masala” has been used by the plaintiff to describe the characteristics and quality of the flavour of masala sold along with “Sunfeast Yippee! Noodles”. As per Oxford English Dictionary the term Magic is described as “superlatively good”, “excellent”, “fantastic”. The word “Masala” is the mix of spice for food preparation known to the Indian culinary. It describes the masala in the sachet used for flavouring and for bringing taste to the bland noodles in the pack as wonderful / extraordinary / excellent / fantastic etc. ITC’s contention that the term Magic Masala has a greater value attached to its product, and that it has incurred a huge loss due to the usage of Magical Masala by Nestle, holds no strong ground as the same is used simply as a “flavour descriptor” and “product descriptor” by Nestle and by several other food brands — including, most prominently, Lay’s Magic Masala for potato chips which would fit comfortably inside the alleged deceptive similarity, if strictures were to be imposed on Nestle.

Use of Descriptive Terms and Passing-Off

ITC claimed that by using the term “Magical Masala”, Nestle became liable for passing-off, diluting ITC’s goodwill and deceiving buyers to cause injury to ITC. Passing- off action is a common law remedy recognised under the above Act. An action for passing-off is a broader remedy than an action for infringement of a trademark under Section 134 of said Act.[vii] An action for passing-off is not merely confined to protection of unregistered trademarks. It is also intended to protect overall color scheme, get-up, layout, and trade dress, etc. adopted by a proprietor which his competitor unfairly copies, thereby causing public deception and harm to the proprietor. Hence, to constitute a passing-off claim, the aggrieved party must prove that its goods and the corresponding marks have acquired a reputation/goodwill in the market.[viii]

Apart from proving reputation, the Supreme Court, in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries[ix], observed that the aggrieved party also needs to prove misrepresentation and damage to sustain a passing-off claim. Moreover, the court in JK Oil Industries v. Adani Wilmar Ltd.[x] laid down the triple test to bring a tort of passing-off, which is: firstly, the defendant has made a false representation or employed deception (mere confusion will not suffice); secondly, because of such false representation an unwary consumer is deceived, though there is no necessity to prove intent; and thirdly, the false representation has injured the plaintiff’s goodwill and not just its reputation.

The court in this case acknowledged that ITC’s adoption of the mark in the year 2010 would undoubtedly qualify as prior use over Nestlé for this purpose, but it found use of the word ‘MAGIC’ by Nestlé in relation to food products going back to 1986. The court further observed that “no reason or explanation is forthcoming” from ITC to explain away this adoption. Neither is an affirmative finding of evidence; both are, instead, arguendo claims that ITC is unable to satisfactorily respond to. (Both claims are tied together by the assertion that nothing in the phrase MAGIC MASALA is inherently adapted to distinguish instant noodles — a point which, of itself, probably merits more discussion than the evidence on the issue.)[xi]

Upon comparing the wrapping of Yippee and Maggi, the court asserted that that the overall colour scheme, layout, style and trade dress of the two wrappers are quite different in their respective labels and concluded that no unique claim over MAGIC MASALA is sustainable for either ITC or Nestlé. It did so in the following words:

“It would be unfair to take a view that two common English and Indian words MAGIC and MASALA respectively or when together which are common to the trade former being laudatory had become distinctive of [ITC’s] ‘Sunfeast Yippee! noodles’ so much so that the expression MAGIC MASALA had transcended itself to the status of a sub-brand. Even in an ephemeral sense, the expression MAGIC MASALA cannot be said to have became distinctive as it is common to the trade.”

Hence, as per settled jurisprudence, one cannot conclude Maggi has wrongly copied the Yippee mark “Magic Masala”.

Conclusion

Proprietors who choose words or artistic works which are not distinctive, and are inherently weak or incapable of protection, run the risk of such marks being used by others. Law will not come to their rescue and they are often left without any remedy. Descriptive marks may attain distinctiveness on account of their long use and if nobody else had used it prior in time. If the marks are invented or coined as a new word, it affords a higher degree of protection under law.

ENDNOTES:

[i] C.S. No. 231 of 2013.

[ii] See McCarthy on Trademarks and Unfair Competition, 3rd Edition, J. Thomas McCarthy.

[iii] Id.

[iv] supra note 3, Para. 151.

[v] 295 F.Supp 479.

[vi] (2004) 5 SCC 257.

[vii] supra note 6, Para. 170.

[viii] Sir Shadi Lal Enterprise Ltd. v. Kesar Enterprise Ltd., 1998 PTC(18)

[ix] (2018) 2 SCC 1

[x] 2010 (42) PTC 639 (Del.)

[xi] Eashan Ghosh, ITC v. Nestlé, Magic Masala & Secondary Meaning Challenges, Medium (June 21, 2020), https://medium.com/@EashanGhosh/itc-v-nestl%C3%A9-magic-masala-secondary-meaning-challenges-9a981f4c7dd9.