‘Rexona’ or ‘Reebok’ prima facie appear to be invented or coined words. They may command a higher degree of protection if there is a contest. As regards ‘Magic’/’Magical’ and ‘Masala’, the words are commonly used in the food and cosmetic industry. Therefore, neither ITC nor Nestlé can claim any monopoly. No person can appropriate common and laudatory words. A laudatory epithet cannot be given protection as has been held by Courts. Proprietors are not expected to choose words common to the trade or those words which are laudatory. If they do, they do it at their peril.
The overall scheme, layout, style and the get-up of the two wrappers are different. There is no scope for confusion. As there is no visual or ocular similarity between the two wrappers, there is no scope to infer passing off from a ocular or visual comparison of the two labels.
– Hon’ble Justice C. Saravanan, Hon’ble High Court of Madras, M/s. ITC Limited v. Nestlé India Limited, [C.S. No. 231 of 2013].
“I would say that, paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them; for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B…. A manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet.”
– The Yorkshire Case, (1954) 71 RPC 150.
Eashan Ghosh, rising stalwart in Intellectual Property Law matters, had a brilliant view to share. I have edited it for concerns of brevity of The Last Word.
“Simply put, a descriptive trade mark can distinguish its proprietor and products or services under it if its proprietor can bring proof that the trade mark has, over a period of time, become distinctive through use, to the exclusion of others. In the Court’s terms, ITC needed to demonstrate, first, that they exercised “long [and] arduous uninterrupted use” over the MAGIC MASALA trade mark. This presents a challenge since ITC’s own claim to the trade mark goes only as far back as 2010, set against Nestlé’s first use which is located in 2013. Acquiring distinctiveness across this abbreviated a period is not unknown, but the odds are against it happening. The Court’s survey of trade mark law also requires ITC to show that their adoption and use of MAGIC MASALA was unique, to the exclusion of others in the market. This claim is undercut by some impressive legwork by Nestlé, which identified that the words ‘MAGIC MASALA’ are in use by several food brands. A dozen or so of these… would fit comfortably inside the same deceptive similarity strictures sought to be imposed on Nestlé here.
Significantly, the decision — quite literally at times — carries the weight of detailed evidence. That should offer it some leverage over prima facie interim injunction rulings involving food product trade marks, a category of trade mark cases to which recent history has been ambivalent, if not unkind.
In this light, the adjustments made by the Madras High Court to account for suggestive and descriptive elements of brand names, secondary meaning and for ‘transcedent sub-brand status’ are all of high quality. It is, in many ways, reminiscent of a similar set of adjustments made by the Godfrey Philips Supreme Court in 2004, at a time where secondary meaning was only just breaking into India’s trade mark law consciousness.”