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No confusion between “Magic Masala” and “Magical Masala”: Madras High Court

By-Nidhi Tandon

Putting an end to a seven-year-long dispute between two FMCG majors over the use of ‘Magic Masala’ and ‘Magical Masala’ for their noodles brands, the Madras High Court(Court) has ruled that ‘Magic’ is laudatory and neither of the parties can claim monopoly or protection over a laudatory epithet. This order has been issued in a suit filed in 2013 by ITC Ltd.(“ITC”) against Nestle India Ltd. (“Nestle”) to restrain Nestle from using the expression ‘Magic Masala’ for its instant noodles brand Maggi, which ITC claimed had acquired distinctiveness.

ITC claimed that the public identified and related the term ‘Magic Masala’ with its product Sunfeast Yippee! and it has acquired distinctiveness due to its continuous use since 2010. ITC alleged that Nestle has copied the phrase by slightly tweaking it to ‘magical’ instead of ‘magic’. By doing so, Nestle was “passing off” the expression and trying to cheat unwary and gullible customers into buying their product instead of ITC’s.

The Court held that for a mark to be called a distinctive mark the same should be unique and different from the rest in the milieu and it would not need any additional proof to establish distinctiveness. The Court held that the words “Magic” & “Masala” are common words in the food and cosmetic industry and not coined or invented words. Therefore, the word ‘Magic Masala’ is not inherently distinctive. After analysing on whether the mark ‘Magic Masala’ can be given protection as a descriptive mark, i.e., that which directly and clearly conveys information about ingredients, qualities and characteristics of the product or services, the court ruled that it was not a descriptor of the product and was only a laudatory epithet and the same cannot be given monopoly or protection. The Court held that the term ‘Masala’ signifies a mixture of ground spices used in Indian cooking and the words “Magic” ‘ or ‘Magical’ are just expressions. Neither ITC nor Nestle can claim monopoly over the respective laudatory words “Magic” or “Magical” along with the common word “Masala”. Further, the court held that the terms ‘Magic’ and ‘Masala’ are commonly used in the packaged food industry by different manufacturers and it would be unfair to confer monopoly over these expressions. The Court held that neither party is using ‘Magic Masala’ or ‘Magical Masala’ as a brand or sub-brand and the words were only used to describe the flavour of the products. Holding that there was no similarity between the two products that could lead to confusion or passing off, the Court refused to grant relief to ITC.

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