2015-06-01 (Page 1 of 19 ) Khaitan and Co. IP

MANU/TN/0950/2015

Equivalent Citation: MIPR2015(2)40

IN THE HIGH COURT OF MADRAS

O.A. No. 244 of 2013 in C.S. No. 231 of 2013

Decided On: 29.04.2015

Appellants: ITC Limited Vs.

Respondent: Nestle India Limited

Hon'ble Judges/Coram: R.S. Ramanathan, J.

Subject: Intellectual Property Rights

Acts/Rules/Orders: Trade Marks Act, 1999 - Section 30, Trade Marks Act, 1999 - Section 34, Trade Marks Act, 1999 - Section 35

Disposition: Application allowed

Industry: FMCG

Citing Reference:

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Case Note: Trademark - Infringement of Trademark - Grant of ad-interim temporary injunction -Whether suit for temporary injunction restraining Respondent to pass off Plaintiff’s products i.e. Noodles as and for Plaintiff’s noodles by use of offending made MAGICAL MASALA or any mark similar to Plaintiff’s mark MAGIC MASALA or in any other manner - Held, This Court observed from a catena of judgments discussed in instant case that when word was only descriptive of character of goods, no protection can be claimed for use of such word, but if word is known for its distinctiveness secondary meaning, such word is entitled to get protection. In present case word or mark “Magic Masala”cannot be considered as descriptive word. Word/mark “Magic Masala” indirectly suggests magical change by consuming Applicant’s product. It is only distinctive word or mark having secondary meaning. Therefore having regard to fact that word Magic Masala has its distinctiveness and it is not descriptive in nature, Applicant is entitled to relief of injunction even accepting case of Respondent that trade dress of color packing of two products are entirely different.

JUDGMENT

R.S. Ramanathan, J.

Discussed

Mentioned

2015-06-01 (Page 1 of 19 ) www.manupatra.com Khaitan and Co. IP Access

1. Original Application praying that this Hon'ble Court be pleased be grant an order of ad interim temporary injunction restraining the respondent, by themselves, their Directors, principal officers, successors in business, assigns, servants, agents, distributors, retailers, stockiest, advertisers or any one claiming through them from in any manner passing off or enabling others to pass off their products i.e. Noodles as and for the Plaintiff's noodles by use of the offending made MAGICAL MASALA or any mark similar to plaintiff's mark MAGIC MASALA or in any other manner whatsoever, pending disposal of the suit.

This original Application coming on this day before this court for hearing the court made the following order:

The applicant/plaintiff filed the suit in C.S. No. 231 of 2013 for following reliefs:-

"a) Permanent injunction, restraining the defendant, by themselves, their Directors, principal officers, successors-in-business, assigns, servants, agents, distributors, retailers, stockiests, advertisers, or any one claiming through them from in any manner, passing off or enabling others to pass off their products, i.e., noodles as and for the plaintiff's noodles by use of the offending mark "Magical Masala", or any mark similar to plaintiff's mark "Magic Masala" or in any other manner, whatsoever;

b) The defendant be ordered to surrender to the plaintiff for the purpose of destruction of all goods, including containers, cartons, packs, labels, prints, blocks, dyes, plates, moulds, and other material, bearing the mark/name "Magical Masala", which is deceptively similar to the plaintiff's mark "Magic Masala".

c) A preliminary decree be passed in favour of the plaintiff, directing the defendant to render account of profits made by use of the offending mark "Magical Masala" and final decree be passed in favour of the plaintiff for the amount of profits, thus found to have been made by the defendant, after the latter have rendered accounts.

d) The defendant be directed to pay to the plaintiff's as compensatory and punitive damages, a sum of Rs. 10,05,000/- for the acts or passing off committed by them.

e) for costs or the suit."

2. The applicant/plaintiff filed the present original Application No. 244 of 2013, seeking for temporary injunction, restraining the respondent/defendant by themselves, their Directors, principal officers, successors-in-business, assigns, servants, agents, distributors, retailers, stockiests, advertisers or any one claiming through them from in any manner, passing off or enabling others to pass off their products, i.e., noodles as and for the plaintiff's noodles by use of the offending mark "Magical Masala" or any mark similar to plaintiff's mark "Magic Masala."

3. The case of the applicant/plaintiff, as seen from the affidavit filed in support of O.A. No. 244 of 2013 is as follows:-

"i) The applicant is one of Indian's foremost Private Sector Companies with a market capitalization of US $ 35 billion and a turnover of US $ 7 billion (as of 2011-12). The applicant has been rated among India's top 500 largest Corporations by Fortune Magazine during two consecutive years 2010 and 2011, and among Asia's 'Fab 50' by Forbes Magazine in 2012. The applicant's branded packaged foods business is one of the fastest growing food businesses in India, driven by the market standing and consumer franchise of its popular brands - Aashirvaad, Sunfeast, Bingo!, Kitchens of India, Mint -O, Candyman, Yippee! Etc.

ii) The applicant entered into the Branded packaged foods business in the year 2001, with the launch of "Kitchens of India", read to eat Indian gourmet dishes. In the year 2002, the applicant entered the confectionery segment with the launch of


brands Mint-O and Candyman and the staples segment with the launch of Aashirvaad Atta (Wheat; flour). In the year, 2003, the applicant entered into the biscuits segment with the launch of Sunfeast, and thereafter, in the year 2007, the applicant entered into the fast growing branded snacks category with Bingo! In 2010, the applicant entered the Indian instant noodles market with Sunfeast Yippee! in two variants, viz., I) Yippee! Magic Masala and II) Classic Masala, and they have been available in the market since their launch.

iii) The applicant's instant noodles Magic Masala, is sold across the length and breadth of the Country, and it has been well received by the trade and public since its inception in view of its superior quality, superior taste and reasonable price. Since the applicant's noodles are available in two different variants, the trade and public identify the applicant's Sunfeast Yippee! Magic Masala as Magic Masala and within a short span or two and half years, it has captured double digit market share in the instant noodle segment.

iv) The applicant, in order to distinguish its superior products from that of the others, started using the mark, Magic Masala, and has designed a distinct label, comprising several distinctive features. The applicant's instant noodles Magic Masala, has reached every nook and corner or the Country, and is popular with children and youngsters and has become a household name. The applicant-Company, in order to protect its valuable rights, has applied for registration of its composite label, Magic Masala, comprising several essential features and the same is pending registration. Owing to its excellent quality and reputation, the applicants mark, "Magic Masala" has attained distinctiveness secondary meaning and has come to be associated with that of the applicant and none else. The applicant's instant noodles Magic Masala are sold to the traders, including wholesale distributors and retailers and the trade and public ask for applicant's noodles by the mark "Magic Masala".

v) Owing to the applicant's marketing efforts, coupled with business commitment to cater to the needs of a wide spectrum or customers, Magic Masala has become distinctively identifiable with the applicant's instant noodles and the total turnover of business carried on by the applicant under the mark "Magic Masala" runs into several crores of rupees. The applicant has spent substantial sums of money for advertisement and promotion of their business. The applicant has extensively advertised Magic Masala on television, newspapers, magazines, hoardings, etc. The applicants business promotion and advertisement figures in respect of its instant noodles Magic Masala runs into several crores of rupees. The applicant's advertisements have been aired since 2010 and have reached millions of households in the Country. As a result of this, the public and the trade identify Magic Masala only with the applicant and no one else. The applicant has spent substantial amounts in advertising its two instant noodles variants, viz., Magic Masala and Classic Masala.

vi) Thus, by virtue of long, continuous and extensive use, Magic Masala has become distinctive of, and is immediately identified by the trade and public with the noodles manufactured and marketed by the applicant alone and none else. The applicant's products are of superior quality and are manufactured in sophisticated factories under strict quality control and supervision. Due to high quality and affordability, the applicant's product, Magic Masala instant noodles, enjoy great reputation and goodwill amongst the trade and public. Magic Masala forms a predominant feature of the applicant's composite trade mark Sunfeast Yippee! Magic Masala. Thus, the words "Magic Masala" is exclusively associated with the applicant's product alone and none else, and it is well known.

vii) Whileso, in or about the month of March 2013, the applicant came to know that the respondent has launched instant noodles under an identical and/or deceptively similar trade mark "Magical Masala", that too, in respect of identical product, viz.,


instant noodles. The product, Magical Masala instant noodles launched by the respondent is identical and/or deceptively similar to the applicant's product, Magic Masala instant noodles. The respondent, who is well aware of the presence of the applicant's product Magic Masala instant noodles in the market, has adopted an identical and/or deceptively similar mark "Magical Masala" for its instant noodles only with a mala fide intention of riding on the goodwill or' the applicant's Magic Masala and to cut in roads into the market share enjoyed by the applicant.

viii) The respondent has been losing market share to the applicant's instant noodles, viz., Magic Masala and Classic Masala since their launch in September, 2010. The Magic Masala is the most popular variant or instant noodles manufactured by the applicant and constitutes a major part of the total sales made by the applicant's in the instant noodles category. Further, many Newspapers reports have also acknowledged the fact that the respondent is constantly losing its market share to the applicant in the instant noodles category. The applicant has also been certified by the Indian market Research Bureau, a reputed and independent Market Research Agency, for having captured more than 10% of the market share in the instant noodles in a period or less than 3 years and that the respondent has lost its market share in the instant noodles category during that period.

ix) The respondent, on being threatened by the rapid progress made by the applicant,tried to usurp the market share enjoyed by the applicant in the instant noodles segment by resorting to unfair competition by using an identical and/or deceptively similar mark "Magical Masala". The applicant states that the respondent sells its instant noodles in many variants, and therefore, there was no need for the respondent to adopt an identical and/or deceptively similar mark Magical Masala. The respondent sells its instant noodles in the following different variants : Meri Masala, Masala Dumdar, 2 Minutes Noodies - Masala, 2 Minutes Noodles - Chicken, Vegetable Multigrainz, Thrillin Curry, Tricky Tomato, Vegetable Atta Noodles, etc.

x) In the light or the above, it is stated that the respondent, who is well aware of the goodwill and reputation enjoyed by the applicant's Magic Masala instant noodles, to diminish the rapidly growing sales of the applicant's product, and with an ulterior motive to usurp the common law rights vested with the applicant, launched another variant of its instant noodles, by adopting an identical and/or deceptively similar mark "Magical Masala" nor identical products with dishonest intention to cause deception in the consumers' mind and to pass off its goods as that or the applicant's mark "Magic Masala" instant noodles.

xi) It is further stated that the mark "Magical Masala" adopted by the respondent is visually, phonetically and deceptively similar to the applicant's mark "Magic Masala". The applicant is the prior adopter and user or the mark "Magic Masala" with respect to instant noodles and has been using the same since the year, 2010 on an extensive scale continuously since then. The applicant's and the respondent's goods are of same description, i.e. instant noodles and are sold in same shops and over same counters. An ordinary customer, with imperfect recollection, who is used to applicant's product, Magic Masala instant noodles, upon seeing the respondent's products under an identical and/or deceptively similar mark "Magical Masala", would assume that the respondent's product also emanate from the applicant.

xii) Unwary gullible consumers, including children, who come across both the applicant's and the respondent's product in the same shelves, would be deceived as to the origin of the products - and would assume that both the products emerge from the applicant. The applicant states that the respondent's mark "Magical Masala" clearly amounts to dilution or the applicant's magic "Magic Masala", which has been in the market since 2010. The respondent's deliberate attempt to sell noodles under the name Magical Masala, squarely interferes with the applicant's intellectual property rights.


xiii) The applicant has been using the mark "Magic Masala" extensively continuously, and uninterruptedly in India, since 2010, in respect of instant noodles. The words "Magic Masala" with respect to instant noodles is exclusively associated with the applicant's product, and it has gained tremendous reputation and goodwill among the trade and public. The respondent has recently launched noodles variants under the name Magical Masala in respect of identical product, i.e., the instant noodles, which would obviously cause confusion in the minds of the customers and traders as to the source and origin or Magical Masala instant noodles or the respondent on account of extensive usage and sale by the applicant of its product Magic Masala instant noodles, which would ultimately lead to deception, and there is every likelihood of the applicant's suffering damage to its business and trade and also to its goodwill and reputation.

xiv) The respondent's use of the words "Magical Masala" in respect of instant noodles, would amount to passing off the respondents noodles as that of the applicant's. The applicant states that the respondent's use is absolutely mala fide and dishonest. The intention of the respondent is only to cash in on the reputation and goodwill of the applicant earned over the years through long, continuous and widespread use and extensive advertisement by incurring huge expenses."

4. The respondent/defendant filed a counter affidavit, denying all allegations made in O.A. No. 244 of 2013, by making following averments:--

"i) The use of expressions "Magical Masala" by the respondent falls within the permitted use under the provisions of Section 30(Z)(a) of the Trade Marks Act, 1999 (hereinafter, referred to as 'the Act'). Only the provisions of Section 35 of the Act, prohibits any interference in the use or bona fide description of the character or quality or services of the goods or services. It is, therefore, stated that even a registered proprietor of a trade mark cannot be interfered with the use of the registered trade mark, or any similar mark, by any member of trade, if the same is used to indicate the character, quality or kind of the product.

ii) The respondent has used the expression "Magical Masala", as flavour descriptor to its Maggi brand noodles. Therefore, the maintainability of any passing off action does not arise, as Magic Masala conveys, what the flavour of the product is and not the source of origin of the product. Therefore, the claim of passing off made by the applicant is misconceived, and it is liable to be dismissed.

iii) The respondent's product is sold under the trade mark 'Maggi' which is a leading brand in the noodles segment, having 80% plus market share, and the respondent is pioneer in packaged instant noodles, which was introduced in the year, 1983. The description, Magical Masala, is a flavour descriptor, and is a laudatory and descriptive epithet, which lauds the spicy characteristics and quality of Masala (spice), which is packaged in a sachet as Maggi Xtra Delicious Magical Masala Tastemaker, and inserted in Maggi Xtra Delicious Magical Masala noodle packaging, in which, the noodles are packaged and sold together with the tastemaker.

iv) The words "Magical Masala" used on the front or the noodles pack, makes a direct reference to the tastemaker or the flavour descriptor of the noodles. The noodle cakes, which are without any distinctive taste of its own, do not have any flavour, spice or aroma. The Magical Masala tastemaker (spice), which is packaged in a sachet and inserted in Maggi noodles packaging, is an assortment of spices and dehydrated vegetables, meant to add spicy taste, aroma, colour and flavour to the noodles. These spices change the taste magically, when compared to regular Maggi noodles with "Meri Masala". This variant of spice/masala was chosen to be described as Magical Masala, because, it encapsulates additional properties, such as, i) Great spicy taste, ii) Vegetables and iii) Great visual appeal.

v) The respondent is selling different variants of Maggi noodles, which are as


follows:-

"1) Maggi 2 - Minute Masala Noodles,

2) Meri Masala Maggi,

3) Maggi Vegetable Atta Noodles Masala,

4) Me and Meri Tricky Tomato Maggi,

5) Maggi Dal Atta Noodles Sambar,

6) Maggi Cuppa Mania Masala Yo! and

7) Me & Meri Thrillin' Curry Maggi"

The aforesaid products/flavour variant descriptors have been used by the respondent purely to highlight the characteristic, quality, flavour and taste or the noodles and not as a brand. Each flavour is of specific combination of spices and flavours, and hence, has to be differently named.

vi) Atta vegetable noodles variant of Maggi is liked by lot of consumers because of the presence of more vegetables, and ever period of time, number of consumers have suggested more vegetables, making the product visually more appealing and increasing the spicyness quotient. These suggestions were worked upon in creating a new variant for Maggi noodles, and the respondent in house team, responsible for recipe creation, worked on these parameters, and when the taste was finalized and approved, the appropriate flavour descriptor name was researched through consumer interaction. The flavour descriptor, Magical Masala, was liked and talked by an our consumers in interaction. Accordingly, new variant of Magical Masala was adopted and launched.

vii) The marks, Magical Masala, Magic Masala, Classic Masala, Meri Masala, Masala Yo, etc., are common expressions, which cannot be the subject matter of any proprietary right by any member of the trade. Therefore, the applicant cannot claim any proprietary right over the respondent. Further, it is the respondent, which adopted and started use of the "Magic" or the combination of "Magic" and "Masala" in a unique and distinctive manner, which combines words from the English, Hindi and Urdu languages, viz., "Masala B Magic".

viii) Therefore, when the respondent is the prior user of the word "Magic", as well as combination of "Magic", and "Masala" no proprietary right can be claimed by anyone in. such combination. The respondent is using the combination of "Magic" and "Masala" since 2009. Therefore, the respondent is the prior user of such combinative words as descriptive of the flavour, and hence, the applicant 'cannot claim that they are prior user of the work, "Magic" or "Masala", nor they claim any prior right in usage of the words "Magic Masala", being a combination of a laudatory descriptive English word and a Hindi Common word, and also cannot claim any right, therein, being a subsequent user thereof, and the suit filed is liable to be dismissed on this ground.

ix) The respondent is using the word "Magic" for their various ranges of Maggi products internationally, prior to 2010. Some of them are as follows:-

1) Maggi Magic Sinigang

2) Maggi Magic Sarap


3) Maggi Magic Chef

4) Maggi Magic Meals

5) Maggi Magic Sabaw

6) Maggi Magic Lezat

7) Maggi Magic Asia

8) Maggi Magic curry MIX

9) Maggi Magic Chicken

Therefore, it is seen from the above that, it is the respondent, which used the mark Magic/Magical in relation to flavour descriptors/taste enhancer/flavour solutions, prior to the adoption of the same by the applicant.

x) As far as the mark "Masala" is concerned, there cannot be any debate that the same is a common word used to describe the spice. Hence, the combinative use of "Magic" and "Masala" by the applicant cannot be held to be proprietable, as the same is common.

xi) Both the applicant and the respondent are selling packaged noodles under their respective brand "Maggi," and "Sunfeast ITC Yippee", which are totally different. Both products are sold in packaging, which is totally different. The phrase "Magic Masala" is being used by both parties in relation to flavour descriptor of masala/spices, which is added to the noodles. The noodles of the applicant is identified and distinguished by the brand name "Sunfeast ITC Yippee", whereas, the noodles of the respondent is identified and distinguished by the well-known brand name "Maggi".

xii) The respondent has 80% plus market share or noodles segment and it is ridiculous on the part of the applicant to say or suggest that the respondent intends to pass off its goods as those of the applicant, and it is converse. Further, there is no similarity, whatsoever, between the brands or packaging of the noodles of the applicant and the respondent, except the flavour descriptor, describing the flavour of the product and not the source or origin of the product.

xiii) The words "Magic Masala" is widely used not only by the respondent, but also by other manufacturers, viz. X) Lay's Magic Masala, ii) Balaji Magic Masala, iii) Hello Just 2 Good! Magic Masala, iv) Samrudhni Kitchen Magic Masala, v) SDS Magic Masala, vi) Bindass Masala Magic, vii) Janak Magic Noodles Masala, viii) Shreya Magic Mazaa Mix, ix) Chatpati Magic Zeera Masala and x) Food Glory Kitchen Magic Masala. Therefore, the applicant cannot claim any exclusive right to the usage of the mark-"Magical".

xiv) The respondent also denied that the flavour descriptor Magic Masala has become distinctively identifiable with the applicant's instant noodles and it is also denied that the public ask for applicant's instant noodles by the mark "Magic Masala". Noodles or the applicant is identified and distinguished by the brand "Sunfeast ITC Yippee", whereas, the product of the respondent is identified by the brand "Maggi" and there is no question of confusion in the minds of the common man, and therefore, the product of the respondent need not be sold as that of the applicant, nor there will be any confusion in the minds of the consumers having regard to different get up and trade dress of the two products. The respondent also denied others allegations made in the plaint regarding the sales of the applicant's product and the reputation and goodwill enjoyed by the applicant's product


Sunfeast ITC Yippee Magic Masala, by stating that there is no dishonest intention of ulterior motive behind use or the mark "Magical Masala" and there is no necessity to indulge in such cheap practices, as the respondent is the pioneer in the market of noodles.

xv) Therefore, the respondent stated that there is no prima facie case and balance of convenience is in favour of the respondent, and therefore, the applicant is not entitled to an order of injunction."

5. Mr. P.S. Raman, the learned Senior counsel for the applicant submitted that, in the year 2010, the applicant launched Sunfeast ITC Yippee in two variants, viz., Yippee Magic Masala and ii) Classic Masala, and since then, instant noodles Magic Masala is sold across the length and breadth of the Country and within a short span of 2 1/2 years, it captured the double digit market share in the instant noodle segment. The applicant also applied for registration of its composite label, Magic Masala, comprising several essential features and the same is pending registration. The Learned Senior Counsel submitted that the applicant's product Magic Masala attained distinctiveness and secondary meaning and has come to be associated with that of the applicant, and therefore, the applicant is entitled to protection or the mark "Magic Masala" and nobody has got any right to pass off their products as that of the applicant by introducing similar name viz., Magical Masala, as done by the respondent.

6. The learned Senior Counsel for the applicant further submitted that the customers of the applicant distinctively identified the instant noodles of the applicant with the mark "Magic Masala" and it cannot be considered as descriptive word, as it is coined by the applicant and it is known for its distinctiveness having secondary meaning, therefore, the applicant is entitled to protection. The learned Senior Counsel also submitted that the total turnover business carried on by the applicant under the mark "Magic Masala" runs into several crores or rupees and the applicant has spent substantial amounts in advertising its two instant noodles variants, viz., Magic Masala and Classic Masala.

7. The learned senior Counsel for the applicant also submitted that the respondent, though claimed to be pioneer in the instant noodles segment, and are selling their noodles under different brand names and after having realised that their market share is getting dwindled, they introduced Magical Masala noodles with dishonest intention of capturing the market of the applicant and started marketing their noodles with mark "Magical Masala" which is deceptively similar to the mark of the applicant, and therefore, the applicant is entitled to relief of injunction in an action on passing off.

8. The learned Senior Counsel for the applicant also submitted that there is no reason for the respondent to use the mark" "Magical Masala" noodles in its product as the respondent was marketing its noodle in different names even earlier to the applicant, and the act of the respondent in using the similar mark for the noodle after realising that the applicant has captured the market by its product Magic Masala noodles, would prima facie, prove that the intention of the respondent is dishonest and the respondent deliberately used the mark "Magical Masala" to pass off their goods as that of the applicant's product and the mark "Magical Masala" is similar to the mark used by the applicant "Magic Masala" and no justification can be given by the respondent for using the mark "Magical Masala".

9. The learned senior counsel for the applicant also submitted that the mark "Magical Masala" cannot be a descriptive one, as claimed by the respondent and the word "Masala" can be considered as descriptive one and mark "Magical Masala" has been introduced only after realising that "Magic Masala" of the applicant has captured the noodle segment. The learned Senior Counsel also submitted that the children and youngsters are fond of noodles and they had identified noodles with the name or "Magic Masala" and the applicant is marketing their noodles under the name "Magic Masala" by spending crores or rupees on advertisement, and therefore, an ordinary customer, with imperfect- recollection, who is used to applicant's product Magic Masala instant noodles would also be carried away by the noodles marketed by the respondent under the mark "Magical Masala" thinking that this was also the product emanated from the applicant.


10. The learned Senior counsel, therefore, submitted that the respondent is deliberately attempting to sell noodles under the name "Magical Masala" to interfere with the applicant's intellectual property rights. Therefore, the applicant is entitled to the relief of injunction. The learned Senior Counsel also relied upon the following judgments in support of his contentions:--

"1. Soceite des Products Nestle SA and another Vs. Gopal Agencies and others, MANU/DE/1112/2004 : (2005) 30 PTC 63 Del.

2. Ishi Khosla vs. Anil Agarwal and another MANU/DE/7192/2007 : (2007) 34 PTC 370 (Del).

3. SNJ Distilleries Ltd., Vs. Imperial Spirits P. Ltd., MANU/TN/4102/2010.

4. Future Logistics P. Ltd., Vs. Future Logistics Solutions P. Ltd., MANU/TN/1255/2009 : MIPR (2009) (3) 0170.

5. Indian shaving Products Ltd., Vs. Gift Pack and another, (2000) CLC 183.

6. Novartis AG Vs. Crest Pharma P. Ltd., MANU/DE/1587/2009 : (2009) 41 PTC 57 (Del).

7. Ashok Leyland Ltd., Vs. Blue Hill Logistics P. Ltd., MANU/TN/3562/2010 : MIPR (2011) (1) 0249. and

8. Blue Hill Logistics P. Ltd., Vs. Ashok Leyland Ltd., MANU/TN/1329/2011 : (2011) 4 CTC 417."

11. Mr. Sudhir Chandra Agarawal, the learned Senior Counsel for the respondent submitted that the claim of the applicant that the mark or word "Magic Masala" is known for its distinctiveness secondary meaning cannot be accepted, and it is only the combination of and English word and one Urdu word, viz., Magic and Masala and by combining two words, it cannot be considered that it is distinctive in nature and it is not descriptive. The learned Senior Counsel further submitted that, as per Trademarks law, when the name or mark is descriptive of the product, with which, it is associated, the person cannot claim any exclusive right over the same, and only when the name or mark is inherently distinctive, it can claim some protection and the name or mark "Magic Masala" does not satisfy requirement of distinctiveness and it is only descriptive as the masala ingredient, which has been placed inside the packet is expected to create some magical reaction in the taste, therefore, it is only descriptive one, and hence, the applicant cannot claim any right over the same.

12. The learned Senior Counsel for this respondent further submitted that the law of Trade Marks or common law of passing off, does not permit any interference in use of expressions, marks, or terms, which are an apt description of character, quality, kind of product, and not used as indication of source, or original of the product, and the use of the product descriptor in terms of its characteristic such as flavour, ingredients, benefits, quality, etc, cannot be considered as trade mark or mark. The learned Senior counsel also submitted that, under Section 30 of the Trade Marks Act, 1999, registered trade mark has no nexus where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services.

13. The learned senior counsel for the respondent further submitted that under Section 35 of the Act, the Proprietor or a registered user of a registered trade mark is entitled to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, or any of his predecessors in business or the use by any person of any bona fide description of the character or quality of his goods or services. The learned Senior Counsel emphasized the provisions of Section 35 of the Act and submitted that when any person uses any description bona fidely, which reflects the character or quality


or services of the goods, the same cannot be prevented even by the owner of the registered trade mark.

14. Therefore, the learned Senior Counsel for the respondent submitted that, having regard to the words "Magical Masala" which is purely descriptive one, describing the qualities of the ingredients and the Masala, which is packed in a sachet and is sold together with the tastemaker, cannot be injuncted on the ground that the same is phonetically similar to the word or mark "Magic Masala" and is deceptively similar to that of the applicant's product. The learned Senior Counsel further submitted that there cannot be any passing off action, as the words "Magic Masala" conveys, what the flavour of the product is and not the source of origin of the product. The learned Senior Counsel also submitted that there is no question or confusion arising in the minds of the public while purchasing the products of the applicant or the products of the respondent and brought to the notice of this Court about the packing of the applicant's product, Magic Masala instant noodles and the respondent's product Magical Masala instant noodles.

15. The learned senior Counsel for the respondent also submitted that the applicant's product, viz., noodle is sold under the brand Sunfeast ITC Yippee, boldly exhibited in the packet with the brand name ITC and colour combination of the applicant's product Sunfeast Yippee Magic Masala packet is entirely different form the colour combination of respondent's product Magical Masala. The learned Senior Counsel, therefore, submitted that there is no resemblance in trade address of the two products in packing or displaying the name of the company and the brand and merely because, the applicant is using the words Magic Masala and the respondent is using the words Magical Masala, it cannot be stated that the respondent is passing off their products as that of the applicant's by use of the expression Magical Masala.

16. The learned Senior counsel for the respondent, therefore, submitted that there would not be any confusion in the minds of the customers while purchasing these products, as the product of the applicant is sold using the brand name Sunfeast ITC Yippee and the product of the respondent is sold using the brand name Maggi. The learned Senior Counsel reiterated his submission that the Masala or Magic is commonly used as product descriptor by the applicant and such usage is statutorily permitted under Sections 30 and 35 of the Trade Marks Act and also submitted that the word Magic Masala in connection with the noodles is not only used by the respondent but also by various other Companies, for example:- 1) Lay's Magic Masala, ii) Balaji Magic Masala, iii) Hello Just 2 Good!Magic Masala, iv) Samrudhni Kitchen Magic Masala, v) SDS Magic Masala, vi) Bindass Masala Magic, vii) Janak Magic Noodles Masala, viii) Shreya Magic Mazaa Mix, ix) Chatpati Magic Zeera Masala, and x) Food Glory Kitchen Magic Masala.

17. The learned Senior Counsel, therefore submitted no action has been taken by the applicant against those persons, who were using the expression Magic Masala, only on the ground that Magical Masala is only descriptive of the quality of the product, it cannot be considered as distinctive in nature by secondary meaning. Therefore, the applicant cannot restrain the marketing of the respondent's noodles with the name Magical Masala. The Senior Counsel also submitted that the respondent is using the word Masala to enhance the flavour in food even from the year 2000, and therefore, the respondent is also entitled to get protection as prior user.

18. The learned senior Counsel for the respondent also submitted that even in the year 1986, the respondent has introduced Magical Meal, in the year 2003, Maggi Dall Magic, flavour solutions in the form of cubes under the trade mark Maggi Magic Cubes has been introduced, and in the year 2009, Masala B Magic, taste enhancer has been introduced. Therefore, the respondent is using the words Masala and Magic even in the year 1986, and from 2009, they are making their noodles with the brand name Maggi as Masala B Magic, therefore, it cannot be contended that the respondent is attempting to pass off their products by copying the name of the applicant. The learned Senior Counsel submitted that the noodles and Masala are sold in a combo packet and noodles have no taste, and it is only masala, which has been packed in a sachet, that gives flavour to the noodles.

19. The learned senior counsel for the respondent also relied upon following judgments in


support of his contentions:--

"1. Marico Ltd., Vs. Agrotech foods Ltd., MANU/DE/3131/2010 : (2010) 44 PTC 736-

2. Nestle India Ltd., Vs. Mood Hospitality Pvt. Ltd., MANU/DE/0399/2010 : (2010) 42 PTC 514 (Del) (DB).

3. Horlicks Malted Milk Co. Vs Summerskill, 34 RPC 63.

4. The Gillette Co. Vs. A.K. Stationery, MANU/DE/0786/2001 : (2001) PTC 513 (Del).

5. British Sugar Vs. James Robertson, (1996) RPC 261.

6. Satyam Infoway Ltd. Vs. Sify Solutions Pvt. Ltd., MANU/SC/0462/2004 : (2004) 28 PTC 566 (SC).

7. Laxmikant Patel Vs. Chetan Bhai Sha, MANU/SC/0763/2001 : AIR (2002) SC 275.

8. Durga Dutt Sharma Vs. N.P. Laboratories, MANU/SC/0197/1964 : AIR (1965) SC 980

9. Ruston and Hornby V. Zamindara Engineering, MANU/SC/0304/1969 : AIR (1970) SC 1649.

10. The Rajasthan state Industrial Dev. and Inv. Corp. Vs. Subhash Sindhi Cop. Housing Soc.), MANU/SC/0115/2013 : (2013) 2 Scale 434.

11. (M/s. Johnson and Johnson vs. Christine Hoden) (Stayfree), MANU/DE/0675/1987 : AIR (198B) Del. 249.

12. Amrutanjan Ltd. vs. Mehta Unani Pharmacy (Cold Rub), MANU/TN/1468/1997 : (1999) 19 PTC 514.

13. Sank Kumar Mehra vs. Ram Lakhan (Matkewala), MANU/DE/0653/1999 : (1999) 14 PTC 307.

14. (J.R. Kapoor Vs. Micronix India.,) (Micronix) MANU/SC/1166/1994 : (1994) Suppl. 3 SCC 215.

15. IKHR Hospitality Pvt. Ltd., VS. Bestech India Pvt. Ltd., (Ananda) MANU/DE/2157/2012 : (2012) 50 PTC 535 (Del) (DB).

16. Cadila Health Care Ltd., Vs. Dabur India Ltd., (Sugarfree), MANU/DE/2256/2008 : (2008) 38 PTC 617 (Del) (DB)

17. Cadila Health care Ltd., Vs. Dabur India Ltd., (Sugarfree), MANU/DE/0972/2008 : (2008) 38 PTC 130 (Del).

18. M/s. Aravind Laboraties VS. Modicare (Dazzler), O.A. Nos. 518 and 519 of 2010 in C.S. No. 460 of 2010 Madras High Court.

and

19. (Mc. Cain International Ltd., VS. Country Fair Foods Ltd. (Oven Chips), (1981)


PTC 69."

20. Having regard to the arguments or the learned Senior Counsel for both sides, the points that arise for consideration in this Application are:-

"a) Whether the applicant's mark "Magic Masala" has inherently distinctive secondary meaning in nature or it is only descriptor?

and

b) Whether the applicant has made out prima, facie case for the grant of injunction?"

21. To appreciate the contentions of the learned Senior Counsel for both sides, we will have to see the distinction between "an infringement action" and "a passing of action". In a passing of action, the issue is as follows:--

"Is the defendant selling goods so marked has to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods?"

An action for passing off, itself, suggests is to restrain the defendant from passing of its foods or services to the public as that of the plaintiff's. It is an action, not only to preserve the reputation of the plaintiff, but also to safeguard the public. Distinctive has been explained to mean such use of the trade mark with respect to the goods of a person that the public will immediately and unmistakably co-relate the mark: with the source or a particular manufacturer/owner thereof. When a trade mark, a word mark, is arbitrarily adapted and is such, having no co-relation to the goods in question, then, in such a case, distinctiveness is achieved by normal and ordinary use of the trademark with respect to the goods and it has been held that such trademark or word mark is entitled to the highest decree at protection. On the other hand, when the mark or word is only descriptive of the quality of the goods, which it intends to sell, then, the same is not entitled to protection.

22. Therefore, we will to see the word "Magic Masala" is inherently distinctive with secondary meaning or it is only a descriptor of the quality of the goods that it reflects.

23. It is the specific case of the applicant that the word "Magic Masala" is coined by the applicant and it is known for its distinctiveness and it associated with the product of the applicant and it is not descriptive of the masala ingredients, and therefore, it is entitled to protection.

24. In the judgment reported in MANU/SC/0169/2011 : (2011) 4 S.C.C. 65 in re (T.V. Venugopal Vs. Ushodaya Enterprises Ltd., and another), the Hon'ble Supreme Court while dealing with the law of passing of, whether the trade mark, trade name or mark, are descriptive or generic word and by referring to various judgments, held as follows:-

"Para No. 73. In Halsbury's Laws of England, Volume 48 Fourth edition at page 190, it is stated that it is possible for a word or phrase, which is wholly descriptive of the goods or services concerned, to become so associated with the goods or services of a particular trader that its use by another trader is capable of amounting to a representation that his goods or services are those of the first trader and that although the primary meaning of the words is descriptive, they have acquired a secondary meaning as indicating the products of a particular trader. "

25. Therefore, as per Halsbury's Laws of England, though the word itself is wholly descriptive, prior user is entitled to protection when it has acquired a secondary meaning as indicated in the products of a particular trader.

26. In the judgment reported in MANU/DE/0642/2001 : AIR (2001) Delhi 463 (Acqua. Minerals


Ltd., vs. Mr. Pramod Borse and another), the Hon'ble High Court of Delhi held as follows:-

"Para No. 28. Unless and until a person has a credible explanation as to why did he choose a particular name for registration as a domain name or for that purpose as a trade name which was already in long and prior existence and had established its goodwill and reputation there is no other inference to be drawn than that the said person wanted, to trade in the name of the trade name he had picked up for registration or as a domain name because of its being an established name with widespread reputation and goodwill achieved at huge cost and expenses involved in the advertisement"

In the very same judgment, passages from the Book Clark and Lindsell On Mark in 15th Edition, was quoted, wherein, passing off as an actionable wrong is defined as under : -

"It is an actionable wrong for a trader so to conduct his business as to lead to the belief that his goods or business are the goods or business of another. This wrong is known as "passing off". It is immaterial whether the false representation, as to goods or business, involved in passing off, is made expressly words, or impliedly, by the use or imitation of a mark, trade name or get-up with which the goods of another are associated in the minds of the public."

27. In the judgment reported in MANU/DE/0120/1999 : (1999) PTC (19) 201 in re Yahoo Inc. vs. Akash Arora and another, it is held that in the use of identical or deceptively similar word, the domain word acquire uniqueness and distinctiveness on account of association with its Company, and it, is entitled to protection. In that judgment, she learned Judge relied upon the decision rendered in Ellora Industries v. Banarsi Dass & Ors. reported in MANU/DE/0174/1979 : (1981) PTC 46, where, the law or PASSING OFF is stated as follows:-

"12. The purpose of this tort is to protect commercial goodwill to ensure that peoples' business reputations are not exploited. Since business "goodwill is an asset, and therefore species of property the law protects it against encroachment as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus complementary to trade mark law which is founded upon statute rather than common law. But there is a difference between statute law relating to trade marks and the passing off action; for, while registration of relevant mark" itself gives title to The registered owner, the onus in a passing off action lies upon the plaintiff to establish the existence of the business reputation which he seeks to protect. The asset protected is the reputation the plaintiffs' business has in the relevant mark. This is a complex thing. It is manifested in the various indicia which lead the client or customer to associate the business with the plaintiff; such as the name of the business, whether real or adopted, the mark, design, make up or colour of the plaintiffs goods, the distinctive characteristics of services he supplies or the nature of his special processes. And it is around encroachments upon such indica that passing off actions arise. What is protected is an economic asset"

28. In the very same Judgment, viz., in Yahoo Inc. vs. Akash Arora's case, the learned Judge relied upon the decision rendered in Marks & Spencer vs. One-in-a-Million; reported in (1998) FSR 265, and held that where the value of a name consists solely in its resemblance to the name or trade name of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the defendants choose it? In the same judgment, it has, been held that it is obvious that where the parties are engaged in common or overlapping fields of activity, the competition would take place. If the two contesting parties are involved in the same line or similar line of business, there is grave and immense possibility for confusion and deception and, therefore, there is probability of sufferance of damage.

29. In the Judgment rendered in Reckitt & Colman Products Ltd. v. Borden Inc. and others -MANU/UKHL/0012/1990 : (1990) (1) ALL ER 873 : (1990) 1 WLR 491, the court dealt with the general law applicable to passing off actions and observed as follows:-


"The basic underlying principle of such an action was stated in 1842 by Lord Langdale M.R. in Percy v. Truefitt (1842) 6 Beav. 66, 73 to be: "A man is not to sell his own goods under the pretence that they are the goods of another man......". Accordingly, a misrepresentation achieving such a result is actionable because it constitutes an invasion of proprietary rights vested in the plaintiff. However, it is a prerequisite of any successful passing off action that the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature. It is also a prerequisite that the misrepresentation has deceived or is likely to deceive and that the plaintiff is likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient. Thus, if a customer asks for a tin of black shoe polish without specifying any brand and is offered the product of A which he mistakenly believes to be that of B, he may be confused as to what he has got but he has not been deceived into getting it. Misrepresentation has played no part in his purchase."

30. In the judgment rendered in Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited MANU/SC/0724/2001 : (2002) 2 sec. 147, the Hon'ble supreme court held as under:

"Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long upon of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so far the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial Court rightly, held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of 'Mahindra' or 'Mahindra & Mahindra' for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned single Judge."

31. In the judgment reported in MANU/SC/0541/2004 : (2004) 5 S.C.C 237 in Godfrey Philips India Limited v. Girnar Food it Beverages (P) Limited, a descriptive trademark may also be entitled to protection, if it has assumed a secondary meaning which identifies it with a particular product or has been from a particular source.

32. In the judgment reported in Info Edge (India) Private Limited and another v. Shallesh Gupta and another, MANU/DE/0735/2002 : 93 (2002) DLT 499 the Court observed that, If a product of a particular character or composition is marketed in a particular area or place under a descriptive name and gained a reputation there under, that name which distinguished it from competing products of different composition, the goodwill in the name of those entitled to make use of it there was protected against deceptive use there of the name of competitors.

33. In McCarthy on Trademarks and Unfair Competition (III Edition) it is stated in page 11.01.(1) as follows;-

"The general rule regarding distinctiveness is clear: an identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive (2) has acquired distinctiveness through secondary meaning."


i) In the same book, in the very same page, it is stated as follows:--

"Within the two basic categories are sub- categories that form the complete spectrum of distinctiveness of marks. Arrayed in an ascending order roughly reflecting their eligibility to trademark status an the degree of protection afforded, the categories are (1) generic terms (2) descriptive (3) suggestive and (4) arbitrary or fanciful. Generic terms can never be trademarks, descriptive terms are not inherently distinctive and suggestive, arbitrary and fanciful terms are regarded as being inherently distinctive."

ii) In the very same book, in page No. 11.21, under the heading "The Degree of Imagination Test", it is stated as follows:--

"....Thus, while a descriptive term directly and clearly conveys information about the ingredients, qualities; or characteristics of the product or service, the "suggestive" term only indirectly suggests these things. For example, 360 was found to be only suggestive, not descriptive, of sports shoes because one must use considerable imagination to remember that 360 is the number of degrees in a circle, connect that circle to movement and imagine that the mark connotes the ability to pivot in the shoe for a full circle.

Judge Weinfield's Formulation of the imagination test in the Stix case is often quoted and applied :-

A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods."

34. In the judgment reported in (2010) 42 PTC 914 (Del) (DB) in re Nestle India Ltd., Vs. Mood Hospitality Pvt. Ltd., the Hon'ble High court or Delhi dealt with the expressions "Yo", " Yo China", "Masala Yo" and "Chilly Chow", and held as follows:--

"Para No. 54.....A trade mark acquires distinctiveness when, in the eyes of the public, it distinguishes the goods or services connected with the proprietor of the mark from those connected with others. Does -Yo!? pass this test? On the basis of the material before us and upon a prima facie loot, the answer is - No Distinctiveness of a mark may arise in two ways:

(1) it may be inherently distinctive;

(2) it may acquire distinctiveness by developing a secondary meaning.

A secondary meaning results when, "in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself."

35. In the judgment rendered in Horlicks Malted Milk co. vs Summerskill, 34 RFC 63, the House or Lords concerned with Horlick's Halted Milk with Hedley's Malted Milk and it was held that the Malted Milk was a descriptive term, which had never lost its original proper descriptive meaning and had never become distinctive, exclusively or otherwise of the plaintiff's preparation and as the defendant has distinguished the product by prefix Hedley's, there is no question of passing off.

36. In the judgment reported in MANU/SC/0462/2004 : (2004) 28 PTC 36S (SC) in re Satyam Infoway Ltd. vs Sifynet Solutions Pvt. Ltd., it is held as follows:-

"The next question is would the principles of trade mark law and in particular those


relating to passing off apply? An action for passing off as the phrase "passing off itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its service in a manner which has deceived or would be likely to deceive the public into thinking that the defendants goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one. invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.

The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to plaintiff. What has to be established is the likelihood of confusion in the minds of the public, (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory."

The use of the same or similar domain name may lead to a diversion of users which could result from such users, mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trademark' and could found an action for passing off."

37. In the Judgment reported in MANU/SC/0763/2001 : AIR (2002) SC 275 in re (Laxmikant V. Patel vs. Chetanbhat Shah and another), it is held in para Nos. 11 and 12 as follows:--

"Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and observe the same having been awkwardly termed as passing off and state:-

The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about


themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the Benefit of the reputation already achieved by rival traders.

In Oertli Vs. Bowman (1957) RPC 388, (at page 397) the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up wall be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the marker get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements or passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name."

38. In the judgment reported in MANU/DE/0675/1987 : AIR (1988) Del. 249 M/s. Johnson and Johnson vs. Christine Hoden), the Hon'ble High Court of Delhi dealt with the word Stayfree, and in that case, the plaintiff was using the trademark "Stayfree", whereas, the trademark used by the defendant was "Comfit" Always" and the defendant had used the words "Stayfree" on his packings at seven places but the get up, colour scheme and other features of his packings were altogether different. Therefore, on the totality of the defendant's trademark, there was no likelihood of causing deception or confusion in the minds of the ultimate customers, who were literate or semi literate and not illiterate ladies, to take the goods of the defendant thinking that they were the goods of the plaintiff, and in the aforesaid facts of the case, the Division Bench of Delhi High Court held as follows:-

"Para No. 15. The central question in each case is whether the name or description given by the defendant to his goods is such as to create a likelihood that a substantial section of the purchasing public will be misled into believing that his goods are the goods of the plaintiff. The main question is not the intention of the defendant in using certain words but the probable effect of such action on the minds of the customers. In the end, the Court has to trust to its own perception into the mind of the reasonable man. In the words of Lord Scarman, "balance is to be maintained between the protection of a plaintiff's investment in his product and the protection of free competition". On which side the balance lies is to be seen in the facts and circumstances of each case."

39. In the Judgment reported in (1993) 19 PTC 314 Amrutanjan Ltd. Vs. Mehta Unani Pharmacy, this Court has dealt with the expression "Cold Rub" and held that' use of the word 'Cold Rub' is a bona fide description of the character of the goods, and the safeguard provided under Section 34 of the Trademarks Act, is available to the plaintiff. So the plaintiff is entitled to use the word Cold Rub as a bona fide description of the product in terms of Section 34 of the Trademarks Act.

40. In the judgment reported in MANU/DE/0653/1999 : (1999) 14 PTC 307 in re Sank Kumar Mehra Vs. Ram Lakhan, the Hon'ble High Court of Delhi considered the word 'Matkewala' and held that descriptive word is distinguished from other varieties or grams and groundnuts, and therefore, the plaintiff cannot claim any exclusive right over the same.

41. It is therefore, seen from the aforesaid judgments that, when the word is only descriptive of the character of the goods, no protection can be claimed for use of such word, but if the word is


known for its distinctiveness secondary meaning, such word is entitled to get protection. According to me, the word or mark "Magic Masala" cannot be considered as descriptive word, and as stated in the McCarthy on Trademarks and Unfair Competition (III Edition), imagination is required on the customers part to get some direct description of the product from the term, and it is only suggestive and it cannot be descriptive. The descriptive term directly and clearly conveys information about the ingredients, qualities, or characteristics of the product or service, the "suggestive" term only indirectly suggests these things.

42. According to me, word/mark "Magic Masala" indirectly suggests magical change by consuming the applicant's product. Therefore, the word/mark 'Magic' or 'Magical' cannot be considered as descriptive and it is only distinctive word or mark, having secondary meaning. Though the learned Senior Counsel for the respondent argued that the colour, design, and packing of respondent's product Maggi with Magical Masala and colour, design and packing of the applicant's product, Sunfeast ITC Yippee with Magic Masala are different, there is no likelihood or causing confusion in the minds of the consumers and the consumers can easily identify the applicant's product 'Sunfeast ITC Yippee noodles' and respondent's product Maggi Noodles, having regard to the fact that the word Magic Masala has its distinctiveness and it is not descriptive in nature, the applicant is entitled to the relief of injunction even accepting the case of the respondent that the trade dress of the color packing of the two products are entirely different.

43. As rightly submitted by Mr. P.S. Raman, the learned Senior Counsel for the applicant, the applicant's product is popularly known as Magic Masala, though it is marketed by ITC under the brand Sunfeast Yippee, and admittedly, they are prior user of the word "Magic Masala", and they have proved their market share and they have also proved that they made inroads into the market share of the respondent by introducing the product Magic Masala noodles, and considering all these aspects, I am of the opinion that a prima facie case has been made out by the applicant that they are entitled to the relief of use of the word/mark "Magic Masala" which is distinctive in nature and the mark-used by the respondent, viz., "Magical Masala" is also deceptively similar to that or the applicants word "Magic Masala" and therefore, the respondent is not entitled to any protection under Sections 30 and 35 of the Trademarks.

44. In the result, O.A. No. 244 of 2013 is C.S. No. 231 of 2013 is allowed.

45. Original Application praying that this Hon'ble Court be pleased be grant an order of ad interim temporary injunction restraining the respondent, by themselves, their Directors, principal officers, successors in business, assigns, servants, agents, distributors, retailers, stockiests, advertisers or any one claiming through them from in any manner passing off or enabling others to pass off their products i.e. Noodles as and for the Plaintiff's noodles by use of the offending mark MAGICAL MASALA or any mark similar to plaintiff's mark MAGIC MASALA or in any other manner whatsoever, pending disposal of the suit.

46. This original Application having heard on 14.02.2014 in the presence of Mr. P.S. Raman, Senior Counsel for M/s. A.A. Mohan, Brinda Mohan, S. Subaahiny, S. Diwakar, Arun C. Mohan and R. Ganapathy, Advocates for the applicant herein, and Mr. Sudhir Chandra Agarwal, Senior Counsel for M/s. Sathish Parasaran, Advocates for the respondent herein, and upon reading the Judges Summons and the affidavits of S. Satyanathan, and counter affidavit of Venita Gabriel filed in C.S.No.231 of 2013, and reply affidavit of S. Satyanathan, filed herein, and the plaint, and having stood over for consideration till this date and coming on this day before this court for orders in the presence of the said advocates.

It is ordered:

47. That Nestle India Limited, the respondent/defendant herein, by themselves, their Directors, principal officers, successors in business, assigns, servants, agents, distributors, retailers, stockiests, advertisers or any one claiming through them be and are hereby restrained by an interim injunction till the disposal of the suit from in any manner passing off or enabling others to pass off their products i.e. Noodies as and for the Plaintiff's noodless by use of the offending mark MAGICAL MASALA or any mark-similar to plaintiff's mark MAGIC MASALA or in any other


manner whatsoever.

48. WITNESS THE HON'BLE THIRU. SANJAY KISHAN KAUL, CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 29TH DAY OF APRIL 2015.

Sd./-ASSISTANT REGISTRAR (O.S.II)

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