THE FIGHT FOR MAGIC: An analysis of the case- ITC Limited v. Nestle India Limited, 2020
noodles have its unique position in the Indian market. According to the World Instant
Noodles Association, India is the fourth-largest instant noodles market.The instant noodles market in India has
valued at INR 93.66 Bn in 2017, and there are two big players of this in the
market first is Nestle with its Maggie and ITC with it’s yippee. But in 2013
ITC Company filed a case against Nestle for trademark infringement.
ITC contended that it had introduced ‘Sunfeast Yippee!
Noodles’ with Magic Masala flavour in 2010 and Nestle India’s adoption of a
deceptively similar expression ‘MAGICAL MASALA’ in 2013 to market their noodles
this amounted to passing off.
Argument from petitioner
ITC claimed that Magic Masala had acquired a distinctive and unique place in the market and was
immediately identified by the trade and the public as that of the plaintiff
because of superior quality and affordability.
launched “Magical Masala” as a
sub-brand. It is further submitted that the defendant copied the expression “Magic Masala” by slightly tweaking it
by adding a syllable “al” to the
word “Magic”. The use of similar
words can be seen as the attempt of the defendant to acquire the market of the
petitioner. And adopting “Magical Masala”
deviously for their instant noodle was a malafide intention to ride on
the goodwill of the plaintiff and to cut into the market share enjoyed by the
Also, Indian consumers generally do not check the details
in a roadside grocery shop. The retailers themselves may confuse and substitute
one product for another when orders are placed for “Magic Masala”. This is an intentional act to make confusion among
innocent people and acquire the plaintiff market.
Argument from defendant
defendant had denied having copied the expression “Magical Masala”. The defendant said they were prior adopter of the
word “Magic” in the food
industry like magic -e- masala and they never objected ITC to use the word
magic as it very common to use the word magic in the food industry, therefore,
the plaintiff cannot have an exclusive right of the same.
defense of the defendants that the expression “Magic” was laudatory and therefore incapable of any protection
under the provisions of the Trade Mark Act, 1999 and no common law rights of passing-off
recognized under the aforesaid Act inures to the plaintiff. The expression “Magic” has been used to qualify the
quality of the masala in the packet as "Magic Masala. It was used in a laudatory sense.
further submitted that the food industry market was flooded with various
products where both the words “Magic”
and “Masala” is very common.
Judgment by the court
High Court in one line said, ‘The word “Magic” is laudatory. It is incapable of being appropriated by the
plaintiff (ITC). As such, no person can claim any monopoly over the said words
“Magic” or “Magical” or their derivative
as they are common to the trade. Therefore, it is incapable of being monopolized
by any trader.’
Further, the Court also said that ITC had no intention to use
“Magic Masala” as a trademark or a sub-brand because the fact no trademark application was filed by
the plaintiff (ITC) to register the aforesaid expression “Magic Masala” as word
mark also shows that the said expression was not intended to be used as a
trademark or a sub-brand by the plaintiff.’
Overall color scheme, layout, style, and overall get-up of
the two wrappers i.e. of the plaintiff’s “Sunfeast
bearing the expression “Magic Masala” for its instant noodle and the defendant’s “Maggi
Xtra-delicious Magical Masala” were different. Therefore, these two are separate trademarks within the
meaning of Section 2(zb) of the
Trade Marks Act, 1999, and hence, qualify for protection as a whole.
Therefore, the Court held that the two words, ‘Magic’ which
is laudatory and ‘Masala’ which is colloquial, cannot attain distinctiveness to
exclude others from using them, hence, further substantiating that the phrases,
‘Magic Masala’ or ‘Magical Masala’ do not qualify as trademarks as per the law.
The court also relied on the case of Century Traders v. Roshan Lal Duggar& Co.AIR 1978 where the Court held that the major three ingredients
of passing- off, Goodwill,
misrepresentation, and damages, were not demonstrated or
proved by the Plaintiff. In this case, ITC is unable to prove the main
ingredient of Passing -off.
However, the Court held that ‘the words “Magic” and its derivative “Magical”
are common to the trade. Therefore, neither the plaintiff nor the defendant can
claim any monopoly over the expression Magic” or “Masala” for they are common
words in the Indian culinary and food industry’.
Instant Noodles Market in India 2020 Technology, Share, Demand,
Opportunity, Projection Analysis Forecast Outlook,marketwatch.com ,(July 9, 2020, 10:04 AM)https://www.marketwatch.com/press-release/instant-noodles-market-in-india-2020-technology-share-demand-opportunity-projection-analysis-forecast-outlook-2020-06-02?mod=mw_quote_news
Trade Marks Act, 1999 § 2(zb)
Traders vs Roshan Lal Duggar Co , AIR 1978 Delhi 250