Tamil Nadu

Expressions like ‘Magic’ or ‘Magical’ cannot be monopolised: Madras HC

Judge dismisses case filed by ITC against Nestle India in 2013

The Madras High Court has dismissed a suit filed by ITC against Nestle India seeking to restrain the latter from using the expression ‘Magical Masala’ on their noodles product which was similar to ‘Magic Masala’ used by the former.

The plaintiff, ITC, argued that the expression ‘Magic Masala’ was introduced in 2010 for one of the varieties of noodles launched by them. The dispute arose after Nestle India, the defendant, in 2013 introduced an instant noodles product with the expression ‘Magical Masala’.

While ITC said the adoption of a similar name amounted to passing off, Nestle India argued that monopoly could not be claimed over the expression ‘Magic’ as it was a laudatory expression.

Pronouncing the orders in the suit filed in 2013, Justice C. Saravanan observed that the word ‘Magic’ was commonly used in the food industry and the terms ‘Magic’ and ‘Magical’ were common to the trade.‘Magic’ was laudatory and a laudatory epithet cannot be given monopoly or protection.

The term ‘Masala’ signified a mixture of ground spices used in Indian cooking and it could not be appropriated. Neither the plaintiff nor the defendant could claim monopoly over the expression ‘Magic’ or ‘Magical’ along with the common word ‘Masala’.

Therefore, even though there was a phonetic similarity between ‘Magic’ and ‘Magical’, they were incapable of being monopolised, as they were not only laudatory but also common to the trade, the judge said.

The court said proprietors were expected to wisely choose their marks, which were either arbitrary, fanciful or at best suggestive of their products/goods/services of their market.

A descriptive term which directly and clearly conveys information about ingredients, qualities and characteristics of the product or services are not protectable at the first instance, but may qualify for protection if it has assumed a secondary meaning and identifies as a particular product or as being from a particular source.

On the other hand, a suggestive term used as a mark which indirectly suggests the qualities and characteristics of a product may be registrable and protected.

However, words may become distinctive on account of their long and uninterrupted use, as a result of which they may get a secondary meaning and the consumer might begin to associate them with the goods of such proprietors. In the present case, the defendant had intervened at the earliest occasion, the court said.

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Printable version | Aug 3, 2020 6:20:41 PM | https://www.thehindu.com/news/national/tamil-nadu/expressions-magic-magical-cannot-be-monopolised-hc/article31859769.ece

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