Madras High Court
Itc Limited vs Nestle India Limited on 10 November, 2020
Equivalent citations: AIRONLINE 2020 MAD 1873
Author: T.S.Sivagnanam
Bench: T.S.Sivagnanam, V.Bhavani Subbaroyan
O.S.A.No.170 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 10.11.2020
CORAM :
THE HON'BLE MR.JUSTICE T.S.SIVAGNANAM
AND
THE HON'BLE MRS.JUSTICE V.BHAVANI SUBBAROYAN
Judgment Reserved On Judgment Pronounced On
08.09.2020 10.11.2020
O.S.A.No.170 of 2020
and C.M.P.Nos.8555, 8559, 9158 & 8117 of 2020
ITC Limited,
ITC Centre, 4th Floor,
No.760, Anna Salai,
Chennai-600 002.
Rep., by its Constituted Attorney,
Mr.P.Ramkumar.
Mr.P.Ramkumar,
Rep., by its Constituted Attorney .. Appellant
[Cause title accepted vide Court Order dated 28.07.2020]
-vs-
Nestle India Limited,
No.769, Spencer Plaza,
Phase-1, 6th Floor,
Anna Salai, Mount Road,
Chennai-600 002. .. Respondent
1/137
http://www.judis.nic.in
O.S.A.No.170 of 2020
Original Side Appeal filed under Order XXXVI Rule 1 of OS Rules
read with Section 15 of Letters Patent against the judgment and decree dated
10.06.2020 made in C.S.No.231 of 2013.
For Appellant : Mr.P.S.Raman,
Senior Counsel &
Mr.Mani Shankar
Senior Counsel
: assisted by
Mr.Arun C.Mohan
For Respondent : Mr.Hemanth Singh,
Senior Counsel &
Mr. N.L.Rajha,
Senior Counsel
assisted by
Ms.Gladys Daniel &
Ms.Mamta Jha
*******
JUDGMENT
T.S.Sivagnanam, J.
This appeal by the plaintiff is directed against the judgment and decree in C.S.No.231 of 2013, dated 10.06.2020.
2/137 http://www.judis.nic.in O.S.A.No.170 of 2020
2.The appellant/plaintiff, M/s.ITC Limited, filed the suit against the respondent/defendant, M/s.Nestle India Limited, for a judgment and decree
(a) for permanent injunction restraining the respondent/defendant by themselves, their Directors, Principal Officers, successors-in-business, assigns, servants, agents, distributors, retailers, stockists, 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 the plaintiff's mark MAGIC MASALA or any other manner whatsoever;
(b) the respondent/defendant be ordered to surrender to the appellant/plaintiff for the purpose of destruction 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 appellant/plaintiff's mark MAGIC MASALA;
(c) to pass a preliminary degree in favour of the appellant/plaintiff directing the respondent/defendant to render account of profits made by use 3/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of offending mark MAGICAL MASALA and final decree be passed in favour of the appellant/plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts; and
(d) the respondent/defendant be directed to pay to the plaintiff as compensatory and punitive damages a sum of Rs.10,05,000/- for the acts of passing off committed by them.
3.The case of the appellant as could be culled out from the plaint is that they are a well established business house with a history of more than hundred years with diversified presence in various products and business lines. their branded packaged foods business is one of the fastest growing business in India driven by the market standing and consumer franchise of its popular brands viz., AASHIRVAAD, SUNFEAST, BINGO!, KITCHENS OF INDIA, MINT-O, CANDYMAN, YIPPEE etc. It is stated that the appellant entered into branded packaged foods business in the year 2001 with the launch of “Kitchens of India”, ready to eat Indian gourmet dishes. In the year 2003, the appellant entered biscuits segment with the launch of SUNFEAST 4/137 http://www.judis.nic.in O.S.A.No.170 of 2020 and, in the year 2007, they entered the fast growing branded snacks category with Bingo! In 2010, they entered Indian instant noodles market with “Sunfeast YIPPEE!”. It is claimed that in just over a decade, the food business of the appellant has grown to a significant size with an inevitable distribution reach, a rapidly growing market share and a solid market standing. It is stated that in 2010, the appellant launched Sunfeast YIPPEE! Indian noodles in two variants – YIPPEE! MAGIC MASALA and CLASSIC MASALA, which have been available in the market since their launch in 2010.
4.The appellant claims that their instant noodles within a short span of 2½ years has captured double digit market share in the instant noodles segment. It is submitted that the appellant, in order to distinguish its superior products from that of others, started using MAGIC MASALA and has designed a distinct label comprising several distinctive features. Owing to its excellent quality and reputation, the appellant's MAGIC MASALA has attained distinctiveness and secondary meaning and has come to be associated 5/137 http://www.judis.nic.in O.S.A.No.170 of 2020 with that of the appellant and none else. The appellant claims to have spent substantial sums of money for advertisement and promotion of their business by advertising MAGIC MASALA on television, newspapers, magazines, hoardings, etc., and the expenses runs to several crores of rupees.
5.The appellant states that MAGIC MASALA forms a predominant feature of the appellant's composite trade mark “ Sunfeast YIPPEE! MAGIC MASALA”. Thus, MAGIC MASALA is exclusively associated with the appellant alone and none else and MAGIC MASALA is well known. It is stated that in or about the month of March, 2013, the appellant 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 products, viz., instant noodles.
6.MAGICAL MASALA instant noodles launched by the respondent is identical and/or deceptively similar to the appellant's MAGIC MASALA instant noodles. The respondent, who is well aware of the presence of the 6/137 http://www.judis.nic.in O.S.A.No.170 of 2020 appellant's MAGIC MASALA instant noodles in the market, had 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 of the appellant's MAGIC MASALA and to cut in roads into the market shares enjoyed by the appellant.
7.It is further stated that the respondent is the market leader with respect to instant noodles in India. However, the respondent has been loosing market shares to the appellant's instant noodles MAGIC MASALA and CLASSIC MASALA, since its launch in September, 2010. The respondent feeling threatened by the rapid progress made by the appellant and is trying to usurp the market share enjoyed by the appellant in the instant noodles segment by resorting to unfair competition by using an identical and/or deceptively similar mark MAGICAL MASALA. The respondent sells its instant noodles in different variants and there was no need for the respondent to adopt an identical and/or deceptively similar mark MAGICAL MASALA. The intention of the respondent is dishonest and with an ulterior motive to 7/137 http://www.judis.nic.in O.S.A.No.170 of 2020 usurp the common law rights vested with the appellant and would amount to the respondent passing off its goods as that of the appellant.
8.Further, it is stated that the mischievous use of an identical and/or deceptively similar mark MAGICAL MASALA for identical goods by the respondent is a clear case of violation of common law rights vested with the appellant. The appellant is the prior adopter and user of 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. It is further stated that an ordinary customer with imperfect recollection, who is used to the appellant's MAGIC MASALA instant noodles upon seeing the respondent's products with identical and/or deceptively similar mark MAGICAL MASALA, would assume that the respondent's products also emanate from the appellant, more because the customers of the appellant and the respondent include both literate and illiterate customers and children, who can be easily deceived. The respondent's MAGICAL MASALA clearly amounts to dilution of the appellant's MAGIC MASALA, which has been in 8/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the market since 2010. It is further stated that if the respondent is allowed to use the name MAGICAL MASALA in respect of instant noodles, which would cause significant and substantial damage to the appellant's business and sales in addition to the appellant suffering irreparable loss of reputation and goodwill and also deception to the public. With these pleadings, the appellant sought for a judgment and decree of permanent injunction and for consequential reliefs.
9.The respondent in their written statement, raised the following preliminary objections:-
(i) The suit is for passing off claiming proprietary right in a word “MAGIC MASALA”, which is a flavour/product descriptor of the masala used therein and the appellant cannot claim any proprietary right of exclusive use in the mark “MAGIC MASALA”, which is a description of quality of masala inside the product, viz., noodles. Hence, the suit is not maintainable;
(ii) Dictionary meaning of the word “Magic” is extraordinary, wonderful, excellent, fantastic, etc., and therefore, it is a laudatory word and 9/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the same has been used by the appellant to qualify the quality of masala as “MAGIC MASALA” so as to describe the masala used for flavour of bland noodles in the pack as wonderful/extraordinary/excellent/fantastic, etc., and no passing off action is maintainable;
(iii) The appellant is selling its instant noodles under the trade mark “ITC” “SUNFEAST” and “YIPPEE” in three flavours - “Classic Masala, MAGIC MASALA and Chinese Masala”. Therefore, the appellant cannot claim any proprietary right in such product/flavour description. The trade mark of the appellant for noodles of three different flavours is “ITC, SUNFEAST” and “YIPPEE”. The three flavours are Classic Masala, MAGIC MASALA and Chinese Masala and it is not used as a trade mark to indicate the connection between the appellant and its product for identifying the source or origin of the product and therefore, there is no trade mark usage according to Section 2(zb) of the Trade Marks Act, 1999 (for brevity, “the Act”) and consequently the appellant cannot claim any proprietary right for maintaining passing off action;10/137
http://www.judis.nic.in O.S.A.No.170 of 2020
(iv) As per the appellant's own documents such as annual reports, newspaper advertisements, etc., the trade mark is “SUNFEAST YIPPEE !!” and the three types of masala are product descriptor or flavour descriptor;
(v) The appellant has admitted that the trade mark of the noodles launched and sold by its “SUNFEAST YIPPEE”;
(vi) The respondent is the pioneer and first to introduce instant noodles in India under the trade mark MAGGI in the year 1983. The sale of MAGGI noodles as of 2012 is Rs.2,377 Crores. MAGGI is well known trade mark in India. The trade mark MAGGI is a coined mark used internationally since the year 1884 and in India since 1974 for flavour solutions in the form of cubes. Therefore, the competing trade mark for the purposes of deciding the suit are “SUNFEAST YIPPEE” and “MAGGI”. The packing of the two products are completely different and there is no question of any confusion or deception among the consumers or traders. MAGGI has approximately 80% market share and therefore, the question of MAGGI trading upon the reputation and goodwill of SUNFEAST YIPPEE does not arise and therefore, the suit is misconceived;
11/137 http://www.judis.nic.in O.S.A.No.170 of 2020
(vii) The law of trademarks or common law of passing off does not permit any interference in use of expressions, marks or terms, which are apt description of character, quality or kind of product and not used as indication of source or origin of the product, even if such mark was capable of any proprietary right by an alleged claimant. The use of “Magical Masala” by the respondent falls within such permitted use, is statutorily protected and cannot be interfered with in view of the principles of law envisaged under Section 30(2)(a) of the Act. Similarly, the provisions of Section 35 of the Act prohibiting any interference in the use of “bonafide description” of the character or quality or services of the goods;
(viii) In the light of Section 30(2)(a) and Section 35 of the Act, even a registered proprietor of a trade mark cannot interfere with the use of the registered trade mark or any similar mark by any member of trade, if the same is used to indicate character, quality or kind of the product. The respondent has used “MAGICAL MASALA” to highlight the wonderful taste of masala/flavour descriptor to its noodles sold under the well known trade mark MAGGI. “MAGIC MASALA” is not functioning as a trade mark, that is, not 12/137 http://www.judis.nic.in O.S.A.No.170 of 2020 indicating the source or origin of the product, source and origin of the product is indicated by” SUNFEAST YIPPEE” and therefore, claim of passing off is misconceived;
(ix) The respondent's product is known, sold and offered for sale under the trade mark MAGGI. The description of “Magical Masala” being laudatory and descriptive epithet which lauds the spicy characteristics and quality of masala “spicy”, which is packed in sachet as “MAGGIE Xtra Delicious Magical Masala”. The spices change the taste “magically” making it extraordinary, wonderful, excellent, fantastic and something special;
(x) The respondent is selling various variants of noodles under the trade mark MAGGI, each having its distinctive characteristics and the flavour variant descriptors such as “Masala”, “Vegetable Atta Noodles”, “Meri Masala”, “Tricky Tomato”, “Masala Yo!”, “Magical Masala”, etc., are used to highlight the characteristics, quality and flavour and taste of the noodles and not as a brand;
(xi) Due to commitment from consumers suggesting more vegetables in the product, the in-house team in recipe creation worked out the parameters 13/137 http://www.judis.nic.in O.S.A.No.170 of 2020 and finalised and approved the appropriate flavour descriptor, which was researched through consumers' interaction and the descriptor “Magical Masala” was liked and talked by all consumers of Nestle and accordingly, the new variant “Magical Masala” was adopted and launched;
(xii) The marks “Magical Masala” or “MAGIC MASALA” or “Classic Masala” or “Meri Masala” or “Masala Yo!”, etc., are common expressions, which cannot be the subject matter of any proprietary right by any member of the trade. Notwithstanding, it is the respondent, who is the prior user of the mark “Magic” or combination of “Magic” and “Masala”, they invented it in a unique and distinctive manner, which combines words from English, Hindi and Urdu languages and hence, the respondent is the prior user of the word “Magic” as well as the combination of “Magic” and “Masala” and no proprietary right can be claimed by any one;
(xiii) The pouches of MAGGI branded noodles with flavour descriptor “masala” have been used by the respondent since the year 1983. Similarly, MAGGI taste enhancer “masala - B - magic” has been used by the respondent since the year 2009. In the year 2010, the year during which the appellant 14/137 http://www.judis.nic.in O.S.A.No.170 of 2020 alleged adoption of the description “MAGIC MASALA” by the appellant, the respondent's product “masala - B – magic” was rated as one of the top 10 chart busters in the Economic Times;
(xiv) The respondent is selling MAGGI noodles with “Masala” as well as “magical masala” and both masalas “spices” are different in their flavour and this signifies the characteristic and quality of the flavour and not the source of the product;
(xv) If the mark “Magic” is considered as a proprietable mark, then the respondent is the prior user, the mark “Magic” for Cubes adopted to flavour solutions in the year 2003, the tagline, which was used by the respondent in connection with MAGGI Magic Cubes was “Pinch of Magic”;
(xvi) The affiliates of the respondent have been using “Magic” for their various ranges of MAGGI products internationally prior to 2010 such as MAGGI Magic Sinigang, MAGGI Magic Sarap, MAGGI Magic Chef, MAGGI Magic Meals, MAGGI Magic Sabaw, MAGGI Magic Lezat, MAGGI Magic Asia, MAGGI Magic Curry Mix and MAGGI Magic Chicken; 15/137 http://www.judis.nic.in O.S.A.No.170 of 2020 (xvii) The contention of the appellant that they have used “Magic” for noodles is misconceived as it is obvious with the word “MAGIC MASALA”, as it shows that the word “Magic” is used for masala, which is used as a flavour agent, taste enhancer/flavour enhancer;
(xviii) The suit is misconceived as there is no similarity whatsoever between the brands or packaging of the noodles of the appellant and respondent except the flavour descriptor describing the flavour of the product and not the source or origin of the product;
(xix) The word “MAGIC MASALA” has been used widely by the members of the trade much prior to the appellant in relation to edible flavours as flavour descriptor viz., Lay's MAGIC MASALA, Balaji MAGIC MASALA, Hello Just 2 Good! MAGIC MASALA, Samrudhhi Kitchen MAGIC MASALA, SDS MAGIC MASALA, Bindaas Masala Magic, Janak Magic Noodles Masala, Shreya Magic Mazaa Mix, Chatpati Magic Zeera Masala, Food Glory Kitchen MAGIC MASALA, Soya Masala Chow You & Me Magic, Masala Chowmein You & Me Magic, Foody Macroni Magical Masala and Magic Chow; and 16/137 http://www.judis.nic.in O.S.A.No.170 of 2020 (xx) The words, which are commonly used by the trade are incapable of being monopolized and proprietable by any one trader to the exclusion of others, as Trademarks Act does not permit to do so.
10.The respondent, in their preliminary submissions apart from other things, have stated that the trade mark MAGGI was derived from the surname Julius Maggi, Founder of the business Nestle Group carried on from 1886 up to 1947 in the name of Maggi Alimantana S.A., which merged with Nestle and become Alimantana S.A. The trade mark MAGGI has no meaning whatsoever in common parlance and is not a dictionary word. The trade mark MAGGI enjoys highest degree of inherent distinctiveness, it canotes and denotes source and origin of the goods and business of Nestle exclusively and therefore, they are the proprietor of the trade mark MAGGI having exclusive right to use thereof in relation to variety of goods or business. The respondent has been manufacturing and selling variety of culinary products in India under the trade mark MAGGI since 1974 under an arrangement with Nestle. After referring to the various awards received by the respondent, it is 17/137 http://www.judis.nic.in O.S.A.No.170 of 2020 submitted that they have expended substantial amount on advertisement, promotion of the trade mark MAGGI in India through various media. After referring to the annual sales from 1974 to 2013 and the promotional expenses incurred by MAGGI from 1978 to 2013, it is submitted that these would establish goodwill and reputation enjoyed by the respondent. It is further submitted that the trade mark MAGGI is registered in India since 1970 and has been used for noodles since the year 1983 in India and the market share owned by MAGGI is approximately 80%.
11.With regard to the averments set on in the plaint, by way of reply, the respondent in their written statement have submitted that the appellant has admitted in paragraphs 6 and 7 of the plaint that its trade mark is “Sunfeast Yippee” and “Yippee” and on this ground alone the suit is liable to be dismissed. The claims made by the appellant with regard to their sales and that they have captured a double digit market share within a short span of time in the instant noodles segment etc., have been denied. It was further stated that the mark “Magical Masala” or “MAGIC MASALA” or “Classic 18/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Masala” or “Chinese Masala” are common expressions, which cannot be subject matter of any proprietary right by any member of the trade. After reiterating the submissions, which were raised as preliminary objection, stating that the word “Magic” is only laudatory, “MAGIC MASALA” is a flavour descriptor and no proprietary right can be claimed on the same.
12.It is further stated that admittedly, the respondent is the market leader in the instant noodles category having 80% market share and therefore, the contention of the appellant that they are trying to usurp the market share enjoyed by the appellant is highly misconceived. The other averments in the plaint have been denied para-wise. Thus, it is submitted that the suit is wholly baseless, without merit and abuse of process of law; neither the appellant has any proprietary right in a commonly used flavour descriptor “MAGIC MASALA”, nor there is any violation in law by its use by any member of the trade including the respondent and the suit is filed out of the business rivalry and to interrupt the legitimate business of the respondent. 19/137 http://www.judis.nic.in O.S.A.No.170 of 2020
13.The appellant filed a reply to the submissions made by the respondent, which appears to be a line by line denial of the contentions raised in the written statement.
14.The learned Single Bench framed 11 issues for consideration, which are as hereunder:-
“1. Whether the plaintiff is entitled to protect its mark “MAGIC MASALA” used in respect of instant noodles?
2. Whether the action of the defendant in adopting “Magical Masala” for one of its instant noodles is bona fide?
3. Whether the defendant has proved that “MAGIC MASALA” is descriptive as claimed by it?
4. Whether the defendant is estopped from contending that “MAGIC MASALA” is descriptive?
5. Whether the plaintiff enjoys Trademark Rights in the expression “MAGIC MASALA”?
6. Whether the use of the expression “Magical Masala” for the defendant Maggi noodles results in passing-off?20/137
http://www.judis.nic.in O.S.A.No.170 of 2020
7. Whether “MAGIC MASALA”, “Chinese Masala” and “Classic Masala” are merely flavour descriptors or variants and are non-proprietary in nature?
8. Whether the defendant is the prior user of the expression “Magic” in the flavour world in relation to food category?
9. Whether the expression Magic/Magical is common to the trade in relation to flavour variants in the food category?
10.Whether the plaintiff is guilty of material concealment and misrepresentation and if so to what effect?
11.Whether the plaintiff is estopped from claiming trademark rights in “MAGIC MASALA” having admitted it to be a flavour descriptor in the annual reports?”
15.On the side of the appellant/plaintiff, six witnesses were examined as P.W.1 to P.W.6 and 22 documents were marked as Exhibit P1 to Exhibit P22. On the side of the respondent/defendant, one witness was examined as D.W.1 and Exhibits D.28 to D44 were marked through D.W.1 and Exhibits D1 to D27 were marked during the cross examination of P.W.1. For better 21/137 http://www.judis.nic.in O.S.A.No.170 of 2020 appreciation, the details of the witness and exhibits marked through the respective witnesses as has been tabulated in the impugned judgment is quoted herein below:-
Chief Examination of PW1 (Exhibits P1 to P22) :-
Exhibits No. Details of Exhibits
P1 Letter of Authorization
P2 Copies of articles published in Forbes September 2012
issue (internal page 64 to 66) regarding the
achievements of the plaintiff.
P2 A series Copies of articles published in Business Today November 2011 issue, July 2011 issue, November 2012 issue and March 2004, Articles published in Fortune magazines Dec. ‘2011 and Business World Oct’ 2012 & Feb' 2011.
P3 Certificate dated BIL given by Murali Ganesan, EVP-
Finance, Procurement and IT, ITC Limited Foods Division.
P4 Copies of invoices (50 sheets)
P4A Copies of invoices containing 41 sheets which are
produced by the witness from his custody.
P5 Original certificates along with authenticated copies of
the advertisement made by the plaintiff containing 26 sheets.
P6 Original certificates along with authenticated copies of newspaper reports containing 12 sheets.
P7 The original certificate dated 26.09.2016 issued by 22/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Mr.K.Ramakrishnan, Country Head, IMRB Kantar World panel.
P8 Photographs of the Defendants various range of Noodles containing 8 sheets.
P9 Print out copies of the Trademark Application dated 17.01.2013 and the Additional representation dated 21.01.2013 for the Trademark “Masala-AE-Magic”. P10 Print out copies of Trademark Application dated 14.11.2011 along Additional representation covering letter and TM-48 (4 sheets) for the Trademark “Multigrainz”.
P11 Print out copies of Trademark Application dated 25.08.2006 along Additional representation containing two sheets for the Trademark “Hot & Sweet”.
P12 Print out copies of Trademark Application dated 14.04.2006 and Additional representation containing three sheets for the Trademark “Hotheads”.
P13 Print out copies of the judgment dated 04.11.2014 reported in 2005 (30) PTC 63 (Del.) P14 Print out copies of notice of opposition dated 14.08.2013 filed by the Defendant before the Trademark authorities containing 9 sheets.
P15 Photocopies of the Application dated 14.08.2013 for amending the notice of opposition containing 8 sheets. P16 Photograph of point of sale merchandising advertisement of the Defendant’s “Magical Masala” Noodles containing 18 sheets (three sets).
P17 Affidavit of Raghavan and R.Balaji
23/137
http://www.judis.nic.in
O.S.A.No.170 of 2020
P18 Affidavit of K.Jayakumar
P19 Original wrapper of Plaintiff’s MAGIC MASALA
P20 Wrapper of Plaintiff’s Classic Masala
P21 Original wrapper Defendant’s Magical Masala
P22 Photocopies of five invoices of the year 2013
Cross Examination of P.W.1 (Exhibits D1 to D27) :-
Exhibits Details of Exhibits
No.
D1 Colour print out of the photographs of the produce
Sunfeast Yippee Chinese Masala Packet of the Plaintiff Colour print out of the photographs of the products D2 series Sunfeast Yippee Tri colour pasta-masala, Sunfeast Pasta Treat-Tomato Cheese, Sunfeast Pasta Treat-Cheese, Sunfeast Pasta Treat –Sour Cream Onion packets (4 photographs) Colour print out of the photographs of the products D3 series Bingo! Mad Angles Masala Madness, Bingo! Tangles Masala Cheese, Bingo! Tangles Tomato Tangle, Bingo! Tangles Masala Tangle, Bingo! Tangles Salted Tangle, Bingo! Yumitos International Cream & Onion (6 photographs) 3 photographs of ITC Mangaldeep Puja Agarbattis SIN1, D4 series Sandal, Bouquet, Jasmine, Amalu, Cleon; ITC Mangaleep Puja Agarbattis Sandal’ ITC Mangaldeen Puja Agarbattis Fragrance of temple Silver Tradition Products.
D5 Series Two photographs of the Lay’s India’s MAGIC MASALA and Lay’s Classic Salted chips products.
24/137 http://www.judis.nic.in O.S.A.No.170 of 2020 D6 Only the cover of the masala mix after removing the masala.
Seven photographs of the packs of Smith & Jones Masala Noodles, Top Raamen Atta Noodles Masala, Everyday D7 series instant masala noodles, Wai Wai X-press instant noodles Masala delight, Prima Stella instant noodles fun masala, Tasty Treat instant masala noodles, Mr.Noodles MAGIC MASALA.
D8 series Photographs of the packs of the above products. D9 series Colour photocopies of the relevant pages of annual reports 2011, 212 and 213 of the Plaintiff containing seven sheets D10 Copies of page nos.455 and 497 of Oxford English-
English Hindi Dictionary D11 Colour print outs of photographs of Maggi Magic Cubes ( 4 sheets) D12 Three sheets of print outs of photographs of Maggi Masala, Chilli, Smith and Jones Masala Chilli, Smith and Jones Chilli Garlic, Maggi Chilli Garlic, Smith and Jones Hot and Sweet and Maggi Hot and Sweet.
D13 Original 12 cash memos pasted on four sheets.
D14 series Six CDs with story board of the television commercials D15 series Three sheet print outs of the plaintiff’s website D16 series Two sheets of the print out of the plaintiff’s web page under the heading “You ask we answer”.
D17 Print out of the image from the face book page relating to Sunfeast Yippee! noodles Print outs from the ITC portal.com of the financial results 25/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of the Plaintiff relating to quarters ending 30.09.2010, D18 series 31.12.2010, 31.03.2011, 30.06.2011 along with press report, Business standard 17 Aug 2011 contained in the Plaintiff’s portal ( 14 sheets) D19 series Colour print outs of the lays MAGIC MASALA chips packet ( 2 sheets) Print outs of the trade mark registrations status and D20 series certificates taken from www.opindiaonline/gov/in which is the official website of the Registrar of Trademarks (20 sheets) D21 series Colour print out of the photographs of those biscuits (four sheets) D22 Print out from the websites www.rolinkitchen.com (7 sheets) D23 Print out from the websites 2 \www.recipeby sagarika.blogspot.in (9 sheets) D24 The entire magazine in Hindi Crihlakshmi Magazine dated January 2013 D25 series The original relevant pages of the annual reports (7 sheets) D26 series The Empty packets being Maggi Meri Masala 2 minute noodles, Maggi Meri Maala Hungrooo, Maggi Vegetable Multrigrain noodles (Spice remix) Maggi vegetable atta noodles masala tastemaker and Maggi Meri Masala Dumdaar instant noodles (5 sachets) D27 series The print outs of photographs of the reverse side of the packets referred in Ex.D7 series (8 sheets) 26/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Chief Examination of DW1 (Exhibits D28 to D44) :-
Exhibits Details of Exhibits
No.
D28 series The Power of Attorney dated 22.06.2013 and original authorization letter dated 07.04.2017 in favour of Mr.T.S.Venkateswaran D29 series Print media advertisements dated 15.10.1986 D30 Certificate issued by the advertising Agency TLG India Private Limited giving statement as to total cost and spots aired on various channels pertaining to Maggi Magic Cubes for the years 2007-2009 D31 series Photographs of the product Maggi Dal Magic used in the year 2003(5 pages) D32 series Sales Invoices pertaining to Maggi Magic Cubes for the period 2004-2012 (57pages) D33 series Television commercial telecast details along with promotional invoice pertaining to Maggi Magic Cubes for the period 2005 and 2009 (3 pages) D34 series Print Media Advertisements pertaining to Maggi Magic Cubes for the period 2009(29 pages) D35 series Publicity expense estimate in respect of Maggi Dal Magic for the year 2003 (3 pages) D36 series List along with depiction showing various Maggi product using internationally the word Magic Section 65B Affidavit dated 13.04.2017 is encl. as Document No.2 filed on 18.04.2017 before the Court (16 pages) D37 Original certificate without dated issued by TLG India Limited (5 pages) 27/137 http://www.judis.nic.in O.S.A.No.170 of 2020 D38 series Original annual reports of the Defendant for the years 2009-2011 (9 pages) D39 series Computer print out of the story boards of the Defendant’s produce (Section 76(B) certificate as prescribed under the Evidence Act is already filed) (16 pages) D40 series Computer print out of the point of sale materials pertaining to the defendant’s Masala-Ae-magic (Section 65(B) certificate as prescribed under the Evidence Act is already filed) (16 pages) D41 series Computer print out of the sale and promotional invoices (23 pages) (Section 65B certificate already filed) D42 series AC Nelson Report of 2012 showing various distributors for Maggi Masala-Ae-Magic in various states in India (1 page) D43 series Computer print out of the search report from the official website of the Trademark Registry with the search string containing the word Magic in Class 29 & 30 (109 pages) D44 series Computer print out of the depiction of the products showing use of the words MAGIC MASALA in trade (21 pages) Cross Examination of DW1 (Exhibits P23 to P37) :-
Exhibits Details of Exhibits
No.
P23 Copy of the Notice to produce documents dated
12.04.2018 issued by Counsel for plaintiff to the
Defendant.
P24 The reply dated 16.04.2013 given in response to Ex.P23
P25 Certified copy dated 31.10.2017 of Application
No.2463851 [Masala-A-Magic (Label)]
28/137
http://www.judis.nic.in
O.S.A.No.170 of 2020
P26 Certified copy dated 31.10.2017 of Application
No.2233354 [multigrain]
P27 Certified copy dated 31.10.2017 of Application
No.1481850 [Hot & Sweet]
P28 Certified copy dated 31.10.2017 of Application
No.3233479 [Hotheads]
P29 Certified copy dated 31.10.2017 of Application
No.2455786 [Insta-Filter (Device)]
P30 Certified copy dated 03.10.2017 concerning the
Application No.1884590 of the Registered Trademark “Pazzta”.
P31 Certified copy dated 29.09.2017 concerning the Application No.1056836 of the Registered Trademark “Maggi 2-Minute Noodles”.
P32 Certified copy dated 03.10.2017 concerning the Application No.475981 of the Registered Trademark “Maggi 2-Minute Noodles”.
P33 Story Board containing 4 sheets
P34 Story Board of the Nescafe Sunrise Insta Filter (3 sheets)
P35 Two Story Boards containing Maggi Pazta (9 sheets)
P36 Story Board containing the advertisement of the Maggi
Magical Masala (4 sheets)
P37 Story Board containing the advertisement of Maggi 2
Minute Noodles (3 sheets).
16.The learned Single Bench dismissed the suit by the impugned 29/137 http://www.judis.nic.in O.S.A.No.170 of 2020 judgment and the finding on the issues are as hereunder:-
(1) It was held that the appellant/plaintiff is not entitled to protect its mark “MAGIC MASALA” used in respect of instant noodles;
(2) The action of the respondent/defendant in adopting Magical Masala for one of its instant noodles was held to be bonafide;
(3) The respondent/defendant has not proved that “MAGIC MASALA” is descriptive as claimed by it;
(4) This issue was held to be irrelevant for the reason assigned while answering Issue Nos.3 and 5;
(6) The use of the expression Magical Masala by the respondent/defendant for their Maggie Noodles does not result in passing off;
(5) It was held that the appellant/plaintiff does not enjoy the trade mark rights in the expression “MAGIC MASALA”;
(7) “MAGIC MASALA”, “Chinese Masala”, “Classic Masala” are flavour descriptors and are non proprietary in nature;
(8) The respondent/defendant is the prior user of the expression Magic;
(9) The expression “Magic/Magical” is common to the trade in relation 30/137 http://www.judis.nic.in O.S.A.No.170 of 2020 to full fill variance in the food category;
(10) In view of the answers to the above issues, this issue was held to be irrelevance; and (11) In the light of the answers to the above issues, this issue was held to be irrelevant.
17.Aggrieved by the judgment and decree of the learned Single Bench dated 10.06.2020 dismissing the suit, the plaintiff is before us as the appellant in this appeal.
18.Mr.P.S.Raman, learned Senior Counsel assisted by Mr.Arun C.Mohan, learned counsel for the appellant elaborately referred to the factual matrix and in particular that the appellant had the benefit of an order of interim injunction pending suit, which was granted by the learned Single Bench on 29.04.2015 in O.A.No.244 of 2013 and the same remained in force till the disposal of the suit by the impugned judgment. It is further submitted that the respondent filed appeal against the said order in O.S.A.No.97 of 31/137 http://www.judis.nic.in O.S.A.No.170 of 2020 2016. Though the appeal was filed, it was returned by the Registry and not re-presented and after enormous delay, when the appeal was re-presented and the delay was condoned and the appeal was numbered, the respondent submitted that the proceedings may be closed, as their only concern was that the suit may not end. Taking note of this submission, the Hon'ble First Bench while closing the appeal by judgment dated 07.12.2016, pointed out that the respondent need not have any such apprehension, as the direction to conclude the trial vide order dated 07.04.2016, is accompanied by the direction for final hearing. Therefore, it is submitted that the endeavour of the appellant is to convince this Court that the appeal is to be admitted and an order of interim injunction has to be granted to protect the rights of the appellant. It is submitted that it is imperative that status quo anti prior to the suit being dismissed be maintained pending disposal of the appeal, as the appellant would establish a prima facie case for the admission of the appeal, which would equally qualify for interim protection as also that the balance of convenience is in favour of the appellant and failure to grant an interim order will cause irreparable injury to the appellant. It is submitted that as the 32/137 http://www.judis.nic.in O.S.A.No.170 of 2020 appellant has had the benefit of injunction for five year pending disposal of the suit, if the same is maintained pending disposal of this appeal, no prejudice will be caused to the respondent, since the respondent has not used the mark MAGIC MASALA or any other similar mark for a period of five years.
19.The learned Senior Counsel would fairly submit that on account of the long line of decisions rendered by this Court, the admission of this appeal filed under Clause 15 of the Letters Patent is not automatic and the appellant is bound to show a prima facie case for admission of the appeal and if successful, the same would enure to the appellant for seeking interim orders and the appellant would be able to establish the other two parameters viz., balance of convenience and irreparable hardship both in their favour to be entitled for interim orders till the disposal of the appeal.
20.It is submitted that the admitted facts are, the appellant entered into the instant noodles market for the first time in September, 2010 and the name 33/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of the company is ITC, the mark is Sunfeast Yippee and the sub-brand is MAGIC MASALA. At the relevant time, the respondent was leader in the noodles industry enjoying 95% of the market share. Within less than three years, that is, by March, 2013, the appellant was able to capture 12.5% of the market share consequently, the market share of the appellant had fallen and it is then in 2013, the respondent launched their product Magical Masala and the word Magic and Magical are phonetically similar and the adoption of the word “Magical” was dishonest and mala fide and therefore, the appellant had filed the suit.
21.It is submitted that the appellant has not raised any issue with regard to the wrapper or the contents of the wrapper, the colour segment, etc., as they are entirely different. It is submitted that the learned Single Bench was convinced that there is confusion. Though there were seven witnesses (P.W.1 to P.W.6 and D.W.1), 81 documents (Exhibits P1 to P37 and D1 to D44) were marked, the documents have not been referred to in the impugned judgment and one may get an impression that the judgment is a final order passed in an 34/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Interlocutory Application. It is submitted that the suit filed by the appellant is not for infringement under Section 29 of the Act, but it is for passing off, which is an act in tort. Therefore, the Court will apply the trinity test to decide this passing off action. The test would be as to who is the prior user?; is there likelihood of confusion or deception?; whether the adoption can be termed bona fide or mala fide or whether the plaintiff has acquired goodwill?
22.It is submitted that the Court will have to apply the trinity test in passing off action and not apply the test for an infringement action. After referring to the various paragraphs in the impugned judgment, with regard to the conclusion arrived at by the learned Single Bench on the various issues, it is submitted that Issue No.3 was decided in favour of the appellant/plaintiff and it was held that it is the word, which is not a flavour descriptor. Though in the impugned judgment, the observation regarding the bona fides was in favour of the appellant/plaintiff, yet Issue No.2 was decided against the appellant/plaintiff. It is submitted that though Issue No.3 was decided in favour of the appellant/plaintiff, the Court decided Issue No.7 against the 35/137 http://www.judis.nic.in O.S.A.No.170 of 2020 appellant/plaintiff. With regard to Issue No.8, the Court held that the appellant/plaintiff is the prior user for the instant noodles. However, the suit was dismissed on the ground that the word “Magic” is laudatory.
23.It is submitted that the learned Single Bench had failed to take note of the fact that more than 200 marks have been registered with the word “Magic”. Further, it is submitted that there is no discussion about the evidence of P.W.2 to P.W.6 and the Court has not given any finding as regards to the confusion on account of both the marks.
24.Referring to paragraph 241 of the impugned judgment, it is submitted that such finding should have led to a conclusion that the adoption of the mark “Magical Masala” was mala fide and not bona fide, but the said issue was decided against the appellant/plaintiff. It is further submitted that though in several places in the impugned judgment, the findings are in favour of the appellant/plaintiff on the question of law, the Court decided against the appellant/plaintiff. Further, it is submitted that the respondent will not be out 36/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of the market, if injunction is granted and there are several other products being sold by the respondent. Further, it is submitted that the use of the word “Magic” in the product “Magic Cubes” cannot be referred to because, it is not an instant food and the learned Single Bench has rendered a finding that the appellant/plaintiff was the prior user of the word “MAGIC MASALA” for instant noodles.
25.In support of his contention, the learned counsel referred to the judgment of the Hon'ble Supreme Court in Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd., [(2004) 6 SCC 145]. This decision is relied on to support the contention that if two trade rivals claimed to have individually intended the same mark, then the trader who is able to establish prior user will succeed and that it is not essential for the plaintiff to prove long user to establish reputation in a passing off action and it would depend upon the volume of sales and extent of advertisements.
26.Reliance was placed on the decision of the Hon'ble Supreme Court 37/137 http://www.judis.nic.in O.S.A.No.170 of 2020 in S.Syed Mohideen vs. P.Sulochana Bai [(2016) 2 SCC 683]. With regard to the trinity test to be applied in a passing off action and that prior user is considered to be superior than any other rights and the fact that both prior user and subsequent user are registered proprietors are irrelevant for the purpose of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. This decision was also relied on to support the proposition that registration of a mark under the Act is no defence to a passing off action.
27.Reliance was placed on the judgment of the Division Bench of this Court in SNJ Distilleries Ltd. vs. M/s.Imperial Spirits Private Ltd. [(2010) 4 LW 304] with regard to the prior user. Referring to the decision of the High Court of Delhi in Societe des Products NESTLE S.A. & Anr. vs. Gopal Agencies & Ors. [2005 (30) PTC 63 (Del.)], it is submitted that in the said case, the respondent-Nestle had argued a converse case that masala chilly and hot and sweet and masala chilly are sub-brands. Having raised such a 38/137 http://www.judis.nic.in O.S.A.No.170 of 2020 contention and also having been successful in obtaining an injunction against M/s.Gopal Agencies qua the two sub-brands, the respondent is estopped from arguing a converse case in the suit and before this Court.
28.Further, it is submitted that a person claiming exclusive right over an expression cannot challenge the same expression as being generic. In support of such contention, reliance was placed on the decision of the Division Bench of this Court in Blue Hill Logistics Pvt. Ltd. vs. Ashok Leyland Limited [2011 (4) CTC 417].
29.Reliance was placed on an order of a Single Bench of this Court in an Interlocutory Application in the case of Future Logistics Private Ltd vs. Future Logistics Solutions Private Ltd [MIPR 2009 30170 (Madras) = Manu/TN/1255/2009] where the Court granted injunction and restrained the defendant from using the mark “future” with combination of the word “logistics”, which combination has been used in prior point of time by the plaintiff and has created a vast customer base.
39/137 http://www.judis.nic.in O.S.A.No.170 of 2020
30.Reference was made to the decision of the Hon'ble Supreme Court in Vishnudas Trading as Vishnudas Kishendas vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad & Anr. [(1997) 4 SCC 201] in support of the contention that even though the products may fall in the same class of goods, each of the said product is always held as a distinct and separate article of use having its specific characteristic.
31.Reliance was placed on the decision of the Division Bench of this Court in Sri Balamurugan Modern Rice Mill vs. Subbulakshmi Modern Rice Mill & Ors. [C.M.P.Nos.6296 & 6297 of 2005 in C.M.A.Nos.1122 & 1123 of 2005: dated 22.08.2005] for the proposition that trade mark shall be granted in favour of continuous prior user and volume of sale.
32.Reliance was placed on the decision of the Delhi High Court in Indian Shaving Products Ltd. vs. Gift Pack (H.C.) [2000 C.L.C. 183 40/137 http://www.judis.nic.in O.S.A.No.170 of 2020 (Delhi)] to explain as to what are the ingredients to be proved in a passing off action and when a descriptive word can be a trade mark, acquiring goodwill.
33.Mr.C.Manishankar, learned Senior Counsel while adopting the factual and legal submissions made by Mr.P.S.Raman, learned Senior Advocate, submitted that the petition filed by the respondent in C.M.P.No.9158 of 2020 under Order VII Rule 14 CPC is not maintainable and the said provision is not applicable to appeal proceedings. Further, the learned Senior Counsel referred to Order 41 Rule 27 CPC with regard to the reception of additional evidence at the appellate stage. It is submitted that the respondent seeks for receiving additional documents with regard to the trade mark SF Milky Magic and the Court would not permit additional evidence at this stage of the proceedings. Further, the respondent has failed to establish that despite due diligence, they were not in a position to produce these documents and having not established the same, the respondent is not entitled to seek for receiving additional documents, as a matter of right. Further, it is submitted that the Court while deciding as to whether it is required to receive 41/137 http://www.judis.nic.in O.S.A.No.170 of 2020 additional evidence at an appellate stage will consider that the same can be recieved only in exceptional circumstances. Further, unless and until foundational facts are available in the pleadings, additional evidence cannot be introduced at this belated stage and an application cannot be filed by the respondent, since none of the foundational facts are on record. In support of his contention, the learned Senior Counsel referred to the decision of the Hon'ble Supreme Court in Union of India vs. Ibrahim Uddin & Anr. [(2012) 8 SCC 148] and submitted that if this Court is of the view that additional evidence needs to be looked into, it should be borne in mind that allowing production of additional evidence at the appellate stage is only in exceptional circumstance and discretion by the appellate Court should be exercised judicially and that circumspection should be considered at the time of final hearing of appeal on merits. With the above submission, the learned Senior Counsel prayed for admitting the appeal and granting an order of interim injunction.
34.Mr.Hemanth Singh, learned Senior counsel assisted by Ms.Gladys 42/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Daniel, learned counsel for the respondent/defendant submitted that the suit filed by the appellant/plaintiff is not a suit for infringement of trade mark and the distinction between the test of infringement and passing of is crucial and this has been rightly maintained by the learned Single Bench. In this regard, the learned counsel placed reliance on the decision of the Hon'ble Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980]. It is submitted that passing of is an action in deceit and not an action for violation of any statutory right of exclusive use granted only by way of registration. The learned Single Bench while deciding the issue Nos.2 and 6 rightly held that the adoption of 'MAGIC MASALA' by the respondent is bonafide and legitimate and the use of 'MAGIC MASALA' is by way of flavour descriptor and not as a trademark. Further, the learned Single Bench rightly held that passing of is an action in deceit. The products of both the parties are well distinguished from each other on account of the trademark 'SUNFEAST YIPPEE' AND 'MAGGI' and the competing package are visually also completely different. Further, it has been rightly held that it is a requirement 43/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of law as test deceptive similarity that the trademarks must be compared as a whole and not in bits and pieces. Accordingly, it was rightly held that the competing trademarks SUNFEAST YIPPEE, MAGIC MASALA AND MAGGI XTRA DELICIOUS are completely different and so is the packing. Further in a passing of action, it is essential and a pre-condition for the plaintiff to first establish its proprietary right to the trademark in question and if such right is not established, the question of any further enquiry in the issue of confusion or deception does not arise. The appellant/plaintiff to claim and establish a proprietary right in 'MAGIC MASALA' as a trademark under common law for passing of has to establish that on account of the exclusive and extensive use thereof, the said mark has acquired distinctiveness, qua the goods and business of the appellant/plaintiff to the exclusion of other traders. 'MAGIC' is a mark common to food industry and not exclusively used by the appellant/plaintiff, no distinctiveness can be established and no exclusive right can be permitted in favour of the appellant. Further 'MAGIC' is a laudatory epithet, lauding the quality of masala sold along with plain noodles under the trademark 'SUNFEAST YIPPEE'!, use of such laudatory word 44/137 http://www.judis.nic.in O.S.A.No.170 of 2020 cannot confer any proprietary right on the appellant to the exclusion of the legitimate right of other traders to use the word 'MAGIC' in the same manner.
35.The learned counsel referred to Section 9 of the Act which deals with absolute ground of refusal of registration of a mark, Section 35 of the Act which deals with legitimate right to use of registered trademark as bonafide description of character or quality. Referring to Paragraph 87 of the impugned judgment, it is submitted that the learned Single Bench was right in referring to the meaning of the word 'MAGIC' from the dictionary to mean marvellous, excellent, fantastic, exciting, etc. and that the word 'MAGIC' is the mix of spices for food preparation known to the Indian culinary. Further by referring to paragraph 207 of the impugned judgment, it is submitted that the Court after carefully analysing the evidence on record arrived at a finding that both the words 'MAGIC' and its derivative 'MAGICAL' are common to the trade and therefore neither the plaintiff nor the defendant can claim any monopoly over the expression 'MAGIC' OR 'MAGICAL' as they are common words in Indian food industry. Further, the learned counsel referred to 45/137 http://www.judis.nic.in O.S.A.No.170 of 2020 paragraph 235 of the judgment to support his contention that the Court had carefully analysed the documentary evidence placed before it and held against the appellant/plaintiff. Thus, it is submitted that the Court rightly came to the conclusion that the word 'MAGIC' being laudatory and common to trade, none can claim proprietary right to the exclusion of other traders. The learned counsel referred to Ex.D19 to show that the word 'MAGIC' has been registered by several entities. Further, by referring to Ex.D43, it is submitted that approximately 546 applications are filed with the Registrar of Trademarks seeking registration of 'MAGIC' as a trademark in one form or other in relation to food products falling in Classes 29 and 30.
36.It is submitted that P.W.1 in their proof affidavit dated 01.10.2016 had stated that the plaintiff 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 and owing to its excellent quality and reputation, the plaintiff's 'MAGIC MASALA' has attained distinctiveness and secondary meaning and has to be associated with 46/137 http://www.judis.nic.in O.S.A.No.170 of 2020 that of the plaintiff and none else. It is the submission of the learned counsel for the respondent that this evidence is false as the plaintiff in their submission before the Registrar of Trademarks when their mark 'SUNFEAST MILKY MAGIC' was challenged by Parle Products Private Limited in a passing off action, the plaintiff has stated that no single trader can monopolize a common dictionary word which is used in a descriptive manner by a numerous traders. Further, it had been stated that several traders are using the word 'MAGIC' with respect to several goods including biscuits, a search in the website of the trademark registry reveal that there are several traders who are registered and/or have applied for trademarks comprising of the word 'MAGIC' in Classes 29 and 30. It is argued that the plaintiff and P.W.1 are guilty of committing acts of perjury on account of making false deposition on oath in the present proceedings. It is submitted that this fact came to the notice of the respondent only in the month of July 2020 while examining the appeal paper book and on account of this misrepresentation, the present appeal is liable to be dismissed in limine. Further, it is submitted that the appellant has failed to establish any acquired goodwill and reputation for its 47/137 http://www.judis.nic.in O.S.A.No.170 of 2020 SUNFEAST YIPPEE! MAGIC MASALA as none of the documents evidencing volume of sales Ex.P3 or market share Ex.P7 have been proven in accordance with law, the Chartered Accountant who has signed the volume of sales Ex.P3 was not examined, the signatory of the market survey in Ex.P7 has not been signed and both the documents were sought to be proven by P.W.1, who had no personal knowledge about their contents nor verified any records or documents to vouch for their authenticity. In this regard, the learned counsel referred to the answers given to question Nos.54 to 58 by P.W.1 during the course of cross examination. Further, it is submitted that the suit is not maintainable against the respondent, who is the prior user of the mark 'MAGIC' and this has been rightly held so in the impugned judgment while answering issue No.8. Therefore, no suit for passing of is maintainable against a prior user.
37.Further, it is submitted that the respondent's mark 'MAGGI' is 48/137 http://www.judis.nic.in O.S.A.No.170 of 2020 synonymous with instant noodles as the respondent was first to introduce instant noodles in India in 1984. The respondent holds over 80% of market share of instant noodles market segment with its turnover of Rs.1725 Crores in 2010. The respondent in addition to the trademark 'MAGGI' has used 'MAGICAL' and 'MAGIC' since 1986 in relation to culinary products. However, the use of 'MAGICAL' and 'MAGIC' by the respondent has always been laudatory epithet/mark to laud and exclaim the exceptional or extraordinary quality of spice marketed in cubes/taste enhancer/flavour enhancer used for enhancing the taste or flavour of culinary products. It is submitted that the trademark distinguishing the product has always been 'MAGGI' and therefore, no passing of claim is maintainable against the respondent. It is further submitted that the issue of deceptive similarity is a matter of impression and adjudication by the Court taking all the facts and surrounding circumstances into action, without relying upon any testimony of witness produced by either party. Therefore, the reliance of appellant on the evidence of P.W.6 who is an ignorant customer, who does not know the difference between the generic names of the products and brands is 49/137 http://www.judis.nic.in O.S.A.No.170 of 2020 misplaced, misconceived and not tenable. It is further submitted that it is incorrect to state that the Court while deciding the suit did not consider the oral and documentary evidence. Referring to various paragraphs of the impugned judgment, it is submitted that all relevant materials placed on record has been taken into consideration and judgment has been rendered which does not call for any interference. Further, it is submitted that the interim order which was granted pending suit was an order where there was no finding of passing of but only on the ground of confusion and deception. It is submitted that confusion is not passing of, passing of is never qua the trademark as passing of is on the product. Infringement will arise only when a trademark is used as against a registered mark and not when it is used descriptively. The appellant/plaintiff having miserably failed to establish any proprietary right, the suit for passing of is to be dismissed in limine. The appellant/plaintiff was required to establish that 'MAGIC MASALA' was used as a trademark, the appellant/plaintiff has to establish that the trademark is descriptive and they have to prove that such mark had generated goodwill. The learned counsel referred to Section 2(m), Section 2(zb)(ii), Section 9, 50/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Section 29, Section 30(2)(a) and Section 35 of the Act. It is submitted that 'SUNFEAST YIPPEE'! was only projected as a trademark and not the word 'MAGIC MASALA'. With regard to the additional documents which has been filed by the respondent for which leave has been sought for in C.M.P.No.9158 of 2020, it is submitted that the respondent would be entitled to rely upon the said document, more so, when it pertains to the appellant. Further, serious note has to be taken on the deposition of P.W.1 who deposed in the suit before this court after the affidavit was filed before the Registry of Trademark stating on oath that 'MAGIC' is a common word. In the counter affidavit filed by the appellant in C.M.P.No.9158 of 2020, the appellant now takes a stand that its explicit position in the present proceedings has been to restrain the respondent's illegal adoption of the appellant's distinctive combination 'MAGIC MASALA' for instant noodles. This would go to show that the appellant is not claiming a right on the word 'MAGIC'.
38.In support of his contentions, the learned counsel referred to the 51/137 http://www.judis.nic.in O.S.A.No.170 of 2020 judgment of the Division Bench of High Court of Calcutta in M/s.Gillete India Limited vs. Harbans Lal Malhotra & Sons Pvt. Ltd. [2009 (41) PTC 378(Cal)(DB)]. It is further submitted that in the event of this Court entertaining the appeal and admitting the same, the respondent will file a cross objection as against that portion of the judgment, wherein a finding has been rendered which the appellant/plaintiff is trying to take advantage of and mis-interrupt to say that it is a finding in their favour. Reliance was placed on the judgment of the Division Bench of High Court of Delhi in the case of M/s.Johnson and Johnson and another vs. Christine Hoden India (P) Ltd. [AIR 1988 Delhi 249 (DB)]. This decision was pressed into service to support the argument that the marks have to be compared as a whole.
39.After drawing our attention to the pictorial representation of the wrapper as exhibited in the impugned judgment, it is submitted that if the mark is compared as a whole, there is absolutely no confusion or any deceptive similarity between the products. Further, by referring to the deposition of P.W.6, it is submitted that he is not a person with average 52/137 http://www.judis.nic.in O.S.A.No.170 of 2020 intelligence and in this regard, relevant portion of the cross examination of P.W.6 were referred to. Thus, when the product of the appellant/plaintiff is SUNFEAST YIPPEE, there cannot be any case for maintaining a suit for passing of. Furthermore, the appellant/plaintiff have also other flavour descriptives such as “Classic Masala” and “Chinese Masala”. Further, it is submitted that the right over a trademark is not restricted to a product. In the instant case, both noodles and spices fall under Class 30. The learned counsel referred to Section 11(1)(a) of the Act and submitted that the said provision deals with grounds for refusal of registration and it is important to note that the registration can be refused if an identity of trademark with an earlier trademark and similarity of goods or service covered by the trademark. It is submitted that the word used in Clause (a) of Section 11(1) is similarity and not same or identical goods. The learned counsel has referred to Section 29 of the Act which deals with infringement of registered trademarks . It is submitted that under clause (a) of Sub-section (2) of Section 29, a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark 53/137 http://www.judis.nic.in O.S.A.No.170 of 2020 which because of its identity with the registered trademark and the similarity of goods or services covered by registered trademark. Further, it is submitted that in clause (b), the word similarity to registered trademarks and the identity or similarity of the goods or services covered by such registered trademark. Further, the learned counsel referred to Section 47 of the Act which deals with removal from the registry and imposition of limitations on ground of non use. Referring to Proviso under sub-section (1) of Section 47, it is submitted that it need not be the same product. Further, it is submitted that noodles and spices are cognate goods and so far as prior use is concerned, it is qua the mark. It is further submitted that the appellant cannot read the impugned judgment in bits and pieces and in this regard, the learned counsel has drawn our attention to the relevant paragraphs in the impugned judgment. Further, it is submitted that if the appellant/plaintiff fails in the core issue, namely, issue Nos.1 and 5, then on the other issues they have to automatically fail as the plaintiff would not have any right. Further, it is submitted that in the impugned judgment, from paragraph 237, the Court has elaborately discussed the issue with regard to passing of, compared the two packaging and held that the competing 54/137 http://www.judis.nic.in O.S.A.No.170 of 2020 brands are completely different from each other and under law, there is no scope to dissect the appellant's label to conclude that the respondent has copied the appellant's sub brand 'MAGIC MASALA' as it was never conceived as as a brand or trademark by the appellant and therefore, there is no misrepresentation by the respondent. Further, it is submitted that the Court rightly held that if the appellant had filed an application for registration of the expression 'MAGIC MASALA' as a word mark, it would have been rejected by the Trademark Registry under Section 9 of the Act.
40.Mr.Hemanth Singh, learned senior counsel for the respondent referred to certain extracts from McCarthy on Trademarks and Unfair Competition, Third Edition to explain the two basic categories that form the complete spectrum of distinctiveness of marks. It is pointed out that the categories are (1) generic terms, (2) descriptive, (3) suggestive and (4) arbitrary or fanciful. It is submitted that generic terms can never be trademarks, descriptive terms are not inherently distinctive and suggestive, arbitrary and fanciful terms are regarded as being inherently distinctive. It is 55/137 http://www.judis.nic.in O.S.A.No.170 of 2020 submitted that the name of a thing cannot identify a source and to explain this concept, once again reference was made to McCarthy. It is therefore submitted that 'Magic' and 'Masala' cannot be a mark as Masala is generic and 'MAGIC MASALA' cannot be distinctive. Further by referring to McCarthy, it is submitted that if a term is generic, all synonyms will also be generic. The learned senior counsel referred to the book by Prof.Christopher Wadlow – The Law of Passing Off and by referring to the learned Author, it is submitted that there is no tort of copying, there is no tort of taking a man's market or customers, neither the mark nor the customers are the plaintiffs to own, there is no tort of making use of another's goodwill as such and there is no tort of competition. Further, the learned Author has observed that the basic economic rule is that competition is not only lawful but the mainspring of the economy and the legislator has recognized that there should be exceptions, it has laid down the rules for these, namely, the laws of patents, trademarks, copyrights and designs have all been fashioned for the purpose. Reliance was placed on the judgment of the Hon'ble Division Bench of the High Court of Delhi in the case of Marico Limited vs. Agro Tech Foods Limited [2010 (44) 56/137 http://www.judis.nic.in O.S.A.No.170 of 2020 PTC 736 (Del.)(DB)], where the question was whether the appellant's registration gives it exclusive right to use the subject trademarks “LOSORB” and “LO-SORB” and consequently whether an action for infringement is maintainable if a person such as the respondent uses a trademark which is deceptively similar or nearly identical or identical to the registered trademarks. It is submitted that in the said decision, it was pointed out that registration only confers prima facie validity and does not prevent the Court from denying the injunction inspite of registration. The second issue which was pointed out is with regard to the claim pertaining to passing off. In this regard the court referred to the decision in the case of Cadila Healthcare Ltd. vs. Gujarat Co-operative Milk Marketing Federation Ltd. and others [2009 (41) PTC 336] wherein it was held that the appellant therein can have no exclusive ownership rights on the trademark of 'LOW ABSORB' as the expression is quite clearly a common descriptive expression/adjective. Thus, it is submitted that even if the term 'MAGIC MASALA' was registered as a mark by the plaintiff, yet the defendant cannot be injuncted as the word 'Masala' is generic and the prefix 'Magical' is laudatory. Reliance was placed 57/137 http://www.judis.nic.in O.S.A.No.170 of 2020 on the decision of the High Court of Justice – Chancery Division in British Sugar PLC vs. James Robertson & Sons Ltd. [(1996) RPC (No.9) 281]. This decision was relied on to support the contention wherein the Court while examining the word 'soap' could turn into a trademark, it was held that no matter how much use a manufacturer made of the word 'soap' as a purported trade mark for the word 'soap', the word would not be distinctive of his goods, he could use fancy lettering as much as he liked, whatever he did would not turn the work into a trade mark. The learned counsel has drawn our attention to various paragraphs of the said judgment and pointed out that a word or words to be really distinctive of a person's goods must generally speaking be incapable of application to the goods of anyone else. It is further submitted that the common laudatory word is incapable of being monopolist. Further by referring on the same decision, it was submitted that though the plaintiff claims to have been in the market for three years, it cannot be a ground to state that the public have regarded it as a trade mark. Further in the very same decision, the Court held that the market survey was not sufficient to ascertain as to whether a mark is acquired sufficiently distinctive character that the 58/137 http://www.judis.nic.in O.S.A.No.170 of 2020 mark has really become a trade mark. Further, it was pointed out that in the case of common or apt descriptive or laudatory words compelling evidence is necessary to establish this.
41.Reliance was placed on the decision of the High Court of Judicature – Court of Appeal in the case of McCain International Limited vs. Country Fair Foods Limited and another [(1981 RPC (No.5) 69]. In the said decision, it was held that the plaintiff therein having consistently advertised and sold their product under the name “McCain Oven Chips”, this was strong evidence that the name “Oven Chips” was descriptive of the product and the name “McCain” indicated the source of origin of the product. This decision was cited in support of the submission that the descriptive name does not indicate the source of the goods but the nature of the goods. Further it has been held that merely because lot of money was spent on advertising, other people cannot come along and use the same words is unacceptable.
42.Reliance was placed on the decision of the House of Lords in 59/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Horlick's Malted Milk Company vs. Summerskill reported in Vol.XXXIV RPC 63, wherein action was brought about to restrain the defendant from using the word “Malted Milk” where prohibitory order of injunction was refused on the ground that the words 'Malted Milk' are descriptive. Referring to the decision in the case of The Gillette Company and others vs. A.K.Stationery and others [2011 (21) PTC 513 (Del)], it is submitted that comparison should be ITC SUNFEAST YIPPEE! MAGIC MASALA with MAGGI XTRA DELICIOUS MAGICAL MASALA as the word 'MAGICAL' is laudatory and 'MASALA' is descriptive.
43.Reliance was placed on the decision reported in 1993 RPC (No.18) 470 [Magic Safe Trademark], wherein the Court considered the term MAGIC SAFE. With regard to the allegation of passing of as made by the appellant/plaintiff, the learned counsel referred to the decision of the Hon'ble Supreme court in Laxmikant Patel vs. Chetanbhai Shah and another [AIR 2002 SC 275] to show the distinction between infringement of registered trademark and an action for passing of. Reliance was placed in the decision 60/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of the High Court of Delhi in the case of Britannia Industries Ltd. vs. ITC Limited [2017 (70) PTC 66 (Del)(DB)] to explain as to what is passing off, a wrongful invasion of a right of property vested in the claimant, but the property which is protected by an action for passing off is not the claimant's proprietary right in the name or get-up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation. For the same proposition, reliance was placed on the decision in the case of Intex Technologies (India) Ltd and another vs. M/s.AZ Tech (India) and another [(2008) 70 PTC 118 (Delhi)(DB)].
44.The learned senior counsel has drawn our attention to paragraph 28 of the judgement of the Hon'ble Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma, to explain as to what is passing of and the distinction between infringement and passing of. For the same proposition, reliance was placed on the decision in the case of Ruston and Hornby Ltd. vs. Zamindara Engineering Co. [AIR 1970 SC 1649]. It is submitted that the Court has to 61/137 http://www.judis.nic.in O.S.A.No.170 of 2020 decide as to the deceptive similarity as it is a question of fact and it has to be decided upon the evidence in each case and it is not a matter for witnesses. In this regard, reliance was placed on the decision in the case of Mount Mettur Pharmaceutical (P) Ltd. vs. Dr.A.Wander and antoher [PTC (Suppl.) (2) 714 (Mad)(DB)]. For the same proposition, reliance was placed in the decision of the Hon'ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Limited [AIR 2002 SC 117 (Para 16)].
45.It was argued by Mr.Hemanth Singh that Ex.P3 and Ex.P7 have not been marked in accordance with law and in this regard, referred to Section 60 of the Evidence Act as also the decision of the Hon'ble Supreme Court in the case of Kalyan kumar Gogoi vs. Ashutosh Agnihotri and others [(2011) 2 SCC 532] and has drawn our attention to paragraph Nos.19, 21 and 23 and submitted that those documents should be rejected as hearsay evidence.
46.Mr.N.L.Rajah, learned senior counsel appearing for the respondent submitted that 'badge of origin' is fundamental to trademark and there are 62/137 http://www.judis.nic.in O.S.A.No.170 of 2020 three factors, namely, (1) capacity to distinguish, (2) inherent distinctiveness and (3) defacto distinctiveness. If there are multiple users of the same mark, it looses its inherent distinctiveness. The conduct of the appellant/plaintiff should be noted that no attempt has been made by them to register their mark 'MAGIC MASALA' nor did they take any action to prevent several other traders who are using the same. The learned counsel referred to Section 9(b) of the Act to point out that the trademark which indicates the kind, quality or intended purpose, it is a ground for refusal of registration. Further, it is submitted that the sales figures which were relied on by the appellant/plaintiff when the injunction was in force cannot be taken into consideration as no person can be put to prejudice on account of an order of Court. Further, it is submitted that the rate of growth of the appellant/plaintiff should be established during the period 2013-2015 and there was no evidence before the trial Court and therefore, the Court will drawn adverse inference against the appellant/plaintiff. Further, it is reiterated that the deceptive similarity will be examined by the Court and it is not for either P.W.4 or P.W.5 or P.W.6 to state whether there is deceptive similarity or confusion between both the products. 63/137 http://www.judis.nic.in O.S.A.No.170 of 2020 It is further submitted that the appellant/plaintiff has been contending that the appeal filed by the respondent as against the interlocutory order of injunction in O.A.No.244 of 2013 was not re-presented and there was gross delay in re- presentation and this is sought to be put against the respondent. It is submitted that at the relevant time due to other issues, the products of the appellant were not available for sale and that could have been a factor for not pursuing the appeal immediately as no purpose would be served as all products were off the shelf.
47.By way of reply, Mr.P.S.Raman, learned senior counsel reiterated that the evidence of P.W.1 to P.W.6 was not considered by the learned Single Bench. Further, in terms of the decision of the Hon'ble Supreme Court in the case of Mahendra & Mahendra Paper Mills Ltd., the Court has to take a decision on seeing the evidence, the evidence of P.W.2 to P.W.6 has been ignored and non-consideration of the evidence and confusion is sufficient to decide in favour of the appellant/plaintiff. Further, it is submitted that all decisions relied on by Mr.Hemanth Singh are all matters where the words 64/137 http://www.judis.nic.in O.S.A.No.170 of 2020 were descriptive marks. Further, in terms of Halsbury Law of England, in India, laudatory marks are entitled for protection. It is further submitted that the learned Single Bench has specifically returned a finding in paragraph 241 of the impugned judgment about the malafide adoption of the mark by the respondent. Reliance was placed on the decision of the High Court of Bombay in the case of Hiralal Prabhudas vs. Ganesh Trading Company and others 1984 (4) PTC 155 (Bom)(DB),, paragraph 14, and submitted that the appellant/plaintiff has led oral and documentary evidence but the defendant has not led any oral evidence and the appellant has discharged the burden cast upon them and the burden thereupon has shifted on the respondent but has failed to establish their contention by leading any evidence which aspect was not considered by the learned Single Bench.
48.Mr.C.Manishankar, learned senior counsel by way of reply reiterated that none of the evidence which was available was considered though referred in the preamble portion of the impugned judgment. Further, the documents, more particularly, Ex.P3 and Ex.P7 are admissible in evidence as they have 65/137 http://www.judis.nic.in O.S.A.No.170 of 2020 been marked through P.W.1, who is authorized to depose and those documents are from the records.
49.By way of rejoinder submission, Mr.Hemanth Singh, learned senior counsel submitted that there is no case law anywhere in the world which has laid down that a suit for passing off would be decreed if there is evidence of deception. This is so because likelihood of deception is a matter of adjudication by Court and this aspect has been clearly brought out in the decision in the case of Mahendra and Mahendra Paper Mills Ltd. Therefore, it is submitted that it is this Court which will be the ultimate deciding authority and there is no requirement in law to compel the defendant to lead evidence with regard to the aspect of likelihood of confusion as it is the opinion of the Court.
50.With the above submission, the learned counsels concluded their arguments.
66/137 http://www.judis.nic.in O.S.A.No.170 of 2020
51.We have elaborately heard Mr.P.S.Raman, learned senior counsel, Mr.C.Manishankar, learned senior counsel for Mr.Arun C.Mohan, learned counsel for the appellant and Mr.Hemanth Singh, learned senior counsel and Mr.N.L.Rajah, learned senior counsel for Ms.Gladys Daniel, learned counsel for the respondent.
52.The suit filed by the appellant is to restrain the defendant from using the mark 'MAGICAL MASALA' in their instant noodles alleging that the defendant is passing of their goods as if that of the goods of the appellant/plaintiff. Admittedly, the appellant does not have any registration for the mark 'MAGIC MASALA'. Before the learned Single Bench, six witnesses were examined by the appellant as P.W.1 to P.W.6 and one witness was examined by the respondent/defendant, namely, D.W.1, there were seven witnesses and 81 documents have been exhibited. The first argument of the learned counsel for the appellant is that the judgment does not refer to any of the documents and there is no discussion on the evidence of P.W.6, who is a 67/137 http://www.judis.nic.in O.S.A.No.170 of 2020 consumer who has lodged a complaint stating that the respondent had passed of its goods as that of the appellant and without examining the evidence, the Court could not have dismissed the suit. On a careful reading of the impugned judgment, it is evidently clear that the learned Single Bench has scanned the entire evidence which was on record. It is not necessary for the Trial Court to verbatim deal with each and every word spoken by a witness. Many a times, the questions which are put to the witness during cross examination may be irrelevant or not germaine to the issue involved in the proceedings. Therefore, the Court has to scan the evidence and take into account such evidence which is relevant for the purpose of deciding the issues framed for consideration.
53.A 'judgment' as defined in Section 2(9) of Civil Procedure Code [CPC] means the statement given by the Judge on the grounds of a decree or order. Order XX deals with Judgment and Decree. Order XX Rule 4(2) of CPC stipulates as to what a judgment should contain. It states the judgments shall contain a concise statement of the case, the points for determination, the 68/137 http://www.judis.nic.in O.S.A.No.170 of 2020 decision thereon and the reasons for such decision. Order XX Rule 5 of CPC states that in suits in which issues have been framed, the Court shall state its findings or decision, with the reasons therefor, upon each separate issue, unless the finding upon anyone or more of the issues is sufficient for the decision of the suit. A judgment is an affirmation of a relation between a particular predicate and a particular subject, it is declaratory, determinative and adjudicatory function or its distinctive characteristics. Judgment, as the culmination of the action, declares the existence of the right, recognizes the commission of the injury or negatives of the allegation of one or the other [Gurdit Singh and others vs. State of Punjab and others [(1974) 2 SCC 260]]. The judicial precedence define judgment to mean a decision which affects the merits of the question between the parties. Determining some right of liability, it is understood as a statement given by the Judge on the ground of a decree or order as defined under Section 2(9) of the CPC. Section 2(14) of CPC defines an 'order' to mean the formal expression of any decision of a Civil Court which is not a decree. The 'decree' is defined in Section 2(2) of CPC to mean the formal expression of an adjudication which, so far as 69/137 http://www.judis.nic.in O.S.A.No.170 of 2020 regards the Court expressing it, conclusively determines the rights of the parties with regard to all or any of the matters in controversy in the suit and may be either preliminary or final. It shall be deemed to include the rejection of a plaint and the determination of any question within section 144, but shall not include, (a) any adjudication from which an appeal lies as an appeal from an order, or (b) any order of dismissal for default; Explanation to Section 2(2) of CPC states that a decree is preliminary when further proceedings have to be taken before the suit can be completely disposed of. It is final when such adjudication completely disposes of the suit, it may be partly preliminary and partly final. Thus, essentially, a judgment determines the rights of parties to a lis.
54.Socrates said four things belong to a Judge; to hear courteously, to proceed wisely, to consider soberly and to decide impartially. The pre- requisite for a good judgment is a good hearing. Before us, the learned Senior Counsels appearing on either side very gracefully stated that the learned Single Bench had patiently heard them and they have had a 70/137 http://www.judis.nic.in O.S.A.No.170 of 2020 satisfaction of a good hearing.
55.Mr.P.S.Raman, learned senior counsel appearing for the appellant contended that a reading of the impugned judgment gives an impression that it is not a judgment but an order in an interlocutory application. Owing to such submission, we had to examine as to what is a judgment as defined in CPC in contradistinction of an order as defined under Section 2(14) of CPC. The argument that the judgment gives an impression to be an order in an interlocutory application is predicated on the submission that there is no discussion on the evidence of P.W.6 who is supposed to be a valuable trusted consumer of the appellant's project.
56.During the course of hearing the appeal and after considering the submissions made on either side, we are of the clear view that the learned Single Bench has penned its judgment which fully satisfies the requirements under Order XX Rule 4(2) of CPC. We do not agree with the submission that the learned Single Bench ignored the oral evidence. Assuming the evidence 71/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of P.W.6 was not considered, the question would be as to whether in passing off action the evidence of P.W.6 would be relevant and if relevant, the extent of relevancy. This issue has been settled by various decisions of the Hon'ble Supreme Court which we shall discuss in the later part of this judgment. Therefore, we reject the argument of the appellant that the impugned judgment does not fulfill the parameters stipulated in CPC to qualify as a judgment.
57.Before we examine the correctness of the impugned judgment, it would be relevant to take note of few provisions of the Trademarks Act, 1999. Section 2(h) of the Act defines 'deceptive similarity' as - a mark shall be deemed to be deceptively similar to another mark if it is so nearly resembles that other mark as to be likely to deceive or cause confusion; Section 2(j) defines 'goods' to mean anything which is the subject of trade or manufacture; Section 2(m) defines 'mark', an inclusive definition, includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; Section 72/137 http://www.judis.nic.in O.S.A.No.170 of 2020 2(zb) defines 'trademark' to mean a mark capable of being represented graphically which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. Under Section 2(zb), there are two sub clauses, clause (i) states that in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be and some person having the right as proprietor to use the mark and (ii) in relation to other provisions of the Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services as the case may be and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification trade mark or collective mark. Section 2(zg) defines 'well known trade mark', in relation to any goods or services, means an mark which has become so to the substantial segment of the public which uses such 73/137 http://www.judis.nic.in O.S.A.No.170 of 2020 goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services. Chapter IV of the Act deals with Effect of Registration. Section 27-'No action for infringement of unregistered trademark; Section 28-'Rights conferred by registration'; Section 29 of the Act deals with 'Infringement of registered trademarks'; Section 30 deals with 'Limits on effect of registered trademark'; Sub-section (2) of Section 30 enumerates instances where a registered trademark is not infringed. Clause (a) of Section 30(2) states that a registered trademark is not infringed 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. Section 35 deals with 'Saving for use of name, address or description of goods or services. The provision commences with a non obstante clause stating that nothing in the Act shall entitle the proprietor or a registered user of a registered trademark to interfere with any 74/137 http://www.judis.nic.in O.S.A.No.170 of 2020 bonafide 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, of any of his predecessors in business, or the use by any person of any bonafide description of the character of quality of his goods or services. This provision protects the bonafide user and prohibits the registered proprietor or registered user from interfering with any bonafide use by a person of his own name or his predecessor in business or place of business or bonafide description of the character or quality of the goods or services.
58.At this stage, it would be beneficial to take note of a few decisions of the Hon'ble Supreme Court and High Courts which have dealt with and explained as to how the similarity is to be assessed and what has to be seen in a passing of action.
59.In Corn Products Refining Company vs. Shangrilla Food Products Limited [1960 1 SCR 168], the Hon'ble Supreme Court observed 75/137 http://www.judis.nic.in O.S.A.No.170 of 2020 that the question whether two competing marks are so similar as to be likely to deceive or cause confusion is one of first impression and it is for the Court to decide it. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man, the overall structural and phonetic similarity of the two marks is likely to deceive or to cause confusion.
60.In Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited [MANU/SC/0199/2001], the Hon'ble Supreme Court summed up the position of law regarding the test to determine a passing of action with the following observations:
“We are unable to agree with the aforesaid observations in Dyechem case, MANU/SC/0407/2000: 2000 ECR1 (SC) : 2000 ECR1(SC). As far as this court is concerned, the decision in the last four decades have clearly laid down that what has to be seen in the case of a passing- off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this 76/137 http://www.judis.nic.in O.S.A.No.170 of 2020 court in the cases of National Sewing Thread Co. Ltd. case AIR 1953 SC 35, Corn Products Refining Co. case MANU/SC/0115/1959 : 1960 1 SCR 968 : [1960] 1 SCR 968 : Amritchara Pharmacy case MANU/SC/0256/1962 : [1963] 2 SCR 484 : [1963] 2 SCR 484, Durga Dutt Sharma case MANU/SC/0197/1964 : [1965] 1 SCR 737 : [1965] 1 SCR 737 and Hoffman-La Roche & Co. Ltd. case MANU/SC/0302/1969 : [1970] 2 SCR 213 : [1970] 2 SCR
213. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this court in Dyechem case sought to examine the difference in the two marks "PICNIK" and "PICNIC". It applied three tests, they being : (1) is there any special aspect of the common feature which has been copied ? (2) mode in which the parts are put together differently, i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded that 77/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK.
xxx “Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered :
(a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works.
(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.78/137
http://www.judis.nic.in O.S.A.No.170 of 2020
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.
The trial court will now decide the suit keeping in view the observations made in this judgment. No order as to costs. Appeal disposed of.” Thus the question would be whether there is a real likelihood of deception of the public and consequent damage to the appellant/plaintiff.
61.The difference between an action for infringement of trademark and that of passing off was explained by the Hon'ble Supreme Court in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories [MANU/SC/0197/1964 = AIR 1965 SC 980].
“The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a 79/137 http://www.judis.nic.in O.S.A.No.170 of 2020 registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufacture of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a 80/137 http://www.judis.nic.in O.S.A.No.170 of 2020 colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide S.21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered. trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the .conclusion that there is 81/137 http://www.judis.nic.in O.S.A.No.170 of 2020 an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade,, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S.21). A point has sometimes been raised as to whether the words "or cause 82/137 http://www.judis.nic.in O.S.A.No.170 of 2020 confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence p./65-5 a question of fact and depends on the judgment of the Court based on the evidence led 83/137 http://www.judis.nic.in O.S.A.No.170 of 2020 before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.”
62.As explained in the above decisions, an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. However, the same is not the gist of an action for infringement which is a statutory remedy conferred on the registered proprietor of a registered trademark for the vindication of the exclusive right to the use of the trademark in relation to those goods. It has been further pointed out that the use by the defendant of the trademark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt where the evidence in respect of passing off consists merely of the colourable use of a registered trademark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trademark 84/137 http://www.judis.nic.in O.S.A.No.170 of 2020 in a passing off action would be such in an action for infringement of the same trademark. It was further pointed out that in an action for infringement the plaintiff must no doubt make it the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. Further, it was pointed out that undoubtedly the question whether the plaintiff's action of passing off against the defendant will be accepted or not has to be accepted by the Court after the evidence is let in in the suit.
63.As held by the Hon'ble Supreme Court in Cadila Healthcare Limited, the action for passing off is generally decided considering certain factors, namely, the nature of the marks, the degree or resemblances, the 85/137 http://www.judis.nic.in O.S.A.No.170 of 2020 nature of the goods, similarity in the nature, character and performance of the goods of the rival traders, class of purchasers, mode of purchase and other relevant surrounding circumstances.
64.Indisputably, the plaintiff's mark is not a registered mark and we have to apply the aforementioned tests to decide the question of deceptive similarity between the mark used by the defendant with that of the plaintiff. Both the marks are word marks with the distinctive colour scheme, patterns and font and admittedly, they are not similar much less deceptively similar and neither this is the case of the appellant/plaintiff. The nature of the goods is the same, namely, instant noodles. The class of purchasers will also be the same for both the noodles and method of purchase would also be same for both products and the only issue would be degree of resemblance between the marks. The case of the appellant is that its main brand is SUNFEAST YIPPEE and 'MAGIC MASALA' is a sub-brand. The plaintiff has not applied for registration of the mark SUNFEAST YIPPEE or MAGIC MASALA. The defendant's mark is MAGGI XTRA-DELICIOUS 86/137 http://www.judis.nic.in O.S.A.No.170 of 2020 MAGICAL MASALA. There is no phonetic similarity, there is no resemblance, nor any other similarity between SUNFEAST YIPPEE and MAGGI XTRA-DELICIOUS. The dispute between the parties is with regard to the word MAGIC and MAGICAL. The plaintiff has used the mark 'MAGIC MASALA' and the defendant's 'MAGICAL MASALA'. The plaintiff claims it to be a sub-brand. The argument of the learned senior counsel for the appellant is by laying much emphasis on the evidence of P.W.2 to P.W.6 and the documents exhibited by the plaintiff and in particular, Ex.P16 and this having not been appreciated the judgment is perverse and in this regard, reliance was placed on the decision in Sebastiao Luis Fernandes (Dead) Through LRS. and others vs. KVP Shastri [(2013) 15 SCC 161].
65.The question would be as to what is the effect of the evidence placed by the plaintiff before the Court. Is it of such relevance that it needs to be mandatorily taken into consideration by the Court to arrive at a decision in a passing off action. We are guided to answer the decision of the Hon'ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. It was pointed 87/137 http://www.judis.nic.in O.S.A.No.170 of 2020 out that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade and others.
66.In Halsbury [Trademarks, 4th Edition, 1984, Volume 48, Para 187], it is stated that in a passing off action degree of similarity of the name, market or other features concerned is important but not necessarily decisive so that an action of infringement of a trademark may succeed on the same facts where a passing off action fails or viceversa.
67.In Schweppes Ltd. vs. Gibbens [(1905) 22 RPC 601], it was held that while dealing with a passing off action that the whole question in the case is whether the thing-taken in its entirety looking at the whole thing - is such 88/137 http://www.judis.nic.in O.S.A.No.170 of 2020 that in the ordinary course of things, a person with reasonable apprehension and proper insight would be deceived.
68.In Mount Mettur Pharmaceuticals, the appellant's trademark 'ASTHMIX' was applied for registration in respect of pharmaceutical preparation for the treatment of Asthma, is not deceptively similar to the opponent's mark 'ASMAC' in respect of pharmaceutical preparation for the treatment of Asthma. The Hon'ble Division Bench referred to the principles laid down in Halsbury's Laws of England, Volume 38, Simonds Edition and by Lord Parker in Pianotist Company Limited Application, [1906 23 RPC 774], wherein it was held that whether or not any degree of resemblance likely to deceive or cause confusion exist is a question of fact for the Court to decide upon the evidence in each case and is not a matter for witnesses. Therefore, the learned Single Bench rightly took note of the facts and circumstances of the case and took upon itself the responsibility to decide as to the degree of resemblance of the products of the appellant and the respondent and whether it is likely to deceive and cause confusion to unwary 89/137 http://www.judis.nic.in O.S.A.No.170 of 2020 customers. Therefore, there is no error in the manner in which the learned Single Bench has proceeded to take a decision in the matter. The learned Single Bench had compared both the competing trademarks as well as the packings and has rendered a finding that they are completely different.
69.The question is whether the procedure adopted by the learned Single Bench to arrive at a conclusion that there is no deceptive similarity is correct. To get an answer to this question, we need to once again revert back the distinction between the infringement action and a passing off action. As explained by the Hon'ble Supreme Court in Ruston & Hornsby Limited, in a passing off action, the issue is “is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods?”. In an infringement action, the issue is “is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trademark? The action for infringement is a statutory right, it is depend upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. Whereas, the gist 90/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of the passing off action is that the defendant is not entitled to represent his goods as the goods of the plaintiff but it is not necessary for the plaintiff to prove that the defendant did this knowingly or with an intent to deceive. It is enough that the get-up of the plaintiff's goods have become distinctive of them and that there is a probability of confusion between them and the goods of the defendant. Therefore, in a passing off action, it is against the goods whereas in infringement action, it is in respect of the registered mark.
70.In the case of Laxmikant V.Patel, the Hon'ble Supreme Court pointed out the three elements of passing off, namely, the reputation of goods, possibility of deception and likelihood of damages to the plaintiff.
71.Referring to the decision in Oertl vs. Bowman [(1957) RPC 388], 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 use in the country distinctive of the plaintiff's goods so that the 91/137 http://www.judis.nic.in O.S.A.No.170 of 2020 use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff's goods.
72.In Marico Limited, the issue was whether the appellant's registration gives it exclusive right to use the trademark 'LOSORB' and 'LO- SORB' such as the respondent uses the trademark which is deceptively similar or nearly identical or identical to the registered trademarks. The second issue was with regard to the claim of the appellant therein pertaining to passing off and whether the respondent's user of the expression 'LOW ABSORB TECHNOLOGY' in relation to its edible oil product amounts to passing off the goods of the appellant which uses the unregistered trademark 'LOW ABSORB'. On the second issue, it was held that the same is entirely covered by the decision in Cadila Healthcare Limited and it was held that the appellant therein can have no exclusive ownership on the trademark 'LOW ABSORB' as the expression 'LOW ABSORB' is quite clearly a common descriptive expression/adjective. The expression 'LOW ABSORB' is not a 92/137 http://www.judis.nic.in O.S.A.No.170 of 2020 coined word and at best, it is a combination of two popular English words which are descriptive of the nature of the product as held in Cadila Healthcare Limited. To be noted such finding was rendered though the plaintiff's mark was a registered mark. In this regard, it was pointed out that no registered trademark 'LOW ABSORB' only describes the characteristics of the product edible oil and ordinarily/normally incapable of being distinctive. Further, it was held that it is high time that those persons who are first to block in using a trademark which is purely descriptive expression pertaining to the subject product ought to be discouraged from appropriating a descriptive expression or an expression which is more or less in a descriptive expression as found in the English language for claiming the same to be an exclusive trademark and which descriptive word mark bears an indication to the product's kind, quality, use or characteristic, etc. This was held to be in accordance with the spirit of various sub sections of Section 9 and Section 30 of the Act besides Section 35 of the Act. Further, explaining the term 'distinctiveness', it was held that when a trademark which is a word mark, is arbitrarily adapted and is such having no co-relation to the goods in question, 93/137 http://www.judis.nic.in O.S.A.No.170 of 2020 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 repeatedly held that such trademarks is entitled to the highest degree of protection. However, this is not and cannot/should not be so for a trademark which is a descriptive work mark and Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source, i.e. the same has acquired a secondary meaning. It was therefore held that when the descriptive trademark is used by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period of time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning. Further, it was held that once others claim a right to the descriptive trademark before the end of the long period essential for a descriptive trademark to become distinctive then the original user of a descriptive trademark cannot ordinarily establish distinctiveness. In the said case [Marico Limited], on facts it was found that 94/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the user is only about seven years and noting the sales, it was held that such user qua a descriptive expression 'LOW ABSORB' cannot be stated to have get such distinctiveness to claim exclusive monopoly of the same as trademark consisting of descriptive words.
73.In M/s.Johnson and Johnson, the plaintiff's trademark was of 'STAY FREE', which is a registered mark in respect of sanitary napkins and personal hygiene products since 1978. The defendant contended that their mark was 'COMFIT ALWAYS' and not 'STAY FREE' and the word 'STAY FREE' is a common descriptive work for the products and it is incapable of distinguishing the goods and thirdly, the words 'STAY FREE' is a common dictionary word and was in existence much before either of the plaintiff's came into existence and lastly there is no likelihood of any confusion or deception. The Court after taking note of the facts and various decisions, observed that the central question in each case is whether the name or description given by the defendant to these goods is such as to create a likelihood that a substantial section of the purchasing public will be misled 95/137 http://www.judis.nic.in O.S.A.No.170 of 2020 into believing that his goods are the goods of the plaintiff. It is pointed out that the main question is not the intention of the defendant in using certain word but the probable effect of such action on the minds of the customers and in the end, the Court has to trust to its own perception into the mind of the reasonable man. It was further pointed out that the true test is whether the totality of the trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark; on totality of circumstances, prima facie, it is difficult to anyone to take the goods of the defendants thinking that they are the goods of the plaintiff. The Court approved the opinion of the learned Single Bench who upon examining both the products found that there is no likelihood of confusion or deception and that the two packings are very much different.
74.In the case before us, the learned Single Bench had, in our view rightly compared both the packings as a whole to examine as to whether there is likelihood of any confusion to be caused in the minds of the ultimate 96/137 http://www.judis.nic.in O.S.A.No.170 of 2020 consumer. In fact, the colour photographs of the products of the appellant as well as the respondent have been incorporated in the impugned judgment in more than one place and the Court has compared the two wrappers found that the packaging of the appellant/plaintiff has primarily a red and orange colour in background whereas the respondent/defendant has primarily yellow, green and red colour in the background. Further, the trademark of the appellant is prominently on top of the packing as 'SUNFEAST YIPPEE'. 'MAGIC MASALA' is written for the flavour sachet inside the pack to give taste to the noodles. So far as the respondent, it has been stated that the trademark is mentioned at the top as 'MAGGI'. The trademark 'MAGGI' and 'MAGGI' logo used since the year 1974 in India is mentioned and XTRA-DELICIOUS MAGICAL MASALA is written for flavour sachet inside the pack. Thus the conclusion arrived at by the learned Single Bench in paragraphs 237 and 238 of the impugned judgment is by following the procedure laid down in various decisions, we have referred above, as to how the products have to be compared to ascertain as to whether there is a likelihood of deception. Upon doing such an exercise, the learned Single Bench rightly held that the over all 97/137 http://www.judis.nic.in O.S.A.No.170 of 2020 colour scheme, lay out, style and the over all get-up of two wrappers are different and there is no scope for confusion. We fully agree with the said conclusion and approve the same.
75.In the decisions referred to, it has been held that a descriptive word cannot be claimed as an exclusive mark and a person cannot be restrained from using such descriptive mark unless the mark has acquired distinctiveness. Admittedly, the plaintiff has been in the instant noodles market for a period of three years [at the time of filing the suit] and Ex.P3 was relied upon to prove the sales and advertisement expenditure incurred by the plaintiff. This document was marked through P.W.1, who was authorized by the plaintiff to file affidavits and testify, working as Assistant Manager [Sales] in Mumbai and looking after the sale and distribution of instant noodles including 'MAGIC MASALA' noodles at the relevant time, i.e. in 2013. In the proof affidavit filed by P.W.1, he would state that the plaintiff had made extensive sales and their instant noodles 'MAGIC MASALA' all over India since 2010, their total turnover runs into several crores and the original 98/137 http://www.judis.nic.in O.S.A.No.170 of 2020 certificate certifying the turnover and the sales expenses of 'MAGIC MASALA' is in terms of Ex.P3, the original sales invoices of the plaintiff since 2010 are Ex.P4 series and the advertisement expenses were substantial and this was sought to be proved by marking Ex.P5 series.
76.During the course of cross examination, it was put to P.W.1 as to whether he has seen all the exhibits which have been filed along with the proof affidavit. His answer was yes. It was put to P.W.1 that Ex.P7, IMRB letter refers to a request by the plaintiff ITC Limited pursuant to which the letter was issued by IMRB, P.W.1 was asked as to who wrote that letter to IMRB and whether he can produce the copy of the same. His answer was that the request was written by their Market Research Team and he does not have the letter that was written right now but can get back on the same. Since P.W.1 in response to question No.54 during the cross examination accepted that the request to IMRB was made by the plaintiff by a letter addressed by the Market Research team and stated that he does not have the letter but can get back on the same, in the continuation of cross examination in question 99/137 http://www.judis.nic.in O.S.A.No.170 of 2020 No.223, he was asked to see question No.54 and requested to tell as to whether he had checked on the request to IMRB, he replied stating that he was not asked to do so. However, while replying question No.234, while denying the suggestion put to him, he stated that the data from IMRB suggest that there is evidence to show that the defendant lost market share to the plaintiff in the instant noodles category after the launching of 'SUNFEAST YIPPEE MAGIC MASALA' noodles. Further states that market observation and other secondary sources suggest that YIPPEE's market share has crossed in excess of 35% in the States like Tamil Nadu as on the said date. A cumulative consideration of evidence of P.W.1 would go to show that the contention of the plaintiff that upon introduction of the plaintiff's instant noodles, it has had a dent on the market share of the defendant was largely based upon the market study which undoubtedly was not conducted by P.W.1 nor by the plaintiff. Therefore, P.W.1 is not the author of the report. In such circumstances, was such evidence admissible in law. To be noted that the Chartered Accountant who had affixed the signature to justify the volume of sales in Ex.P3 nor the signatory of the market survey Ex.P7 were examined. 100/137 http://www.judis.nic.in O.S.A.No.170 of 2020 The question would be whether such evidence is admissible. Section 60 of the Indian Evidence Act, 1872 states that oral evidence must be direct, i.e. if it refers to a fact which could be seen, it must be the evidence of a witness who says he saw it; if it refers to fact which could be heard it must be the evidence of a witness who says he heard it; if it refers to a fact which could be perceived by any other sense or in any other manner, it must be the evidence of witness who says he perceived it by that sense or in that manner; if it refers to an opinion or the grounds on which that opinion is held, it must be the evidence of the person who holds that opinion on those grounds.
77.To qualify the same to be a primary evidence, the witness has to have seen the same and oral evidence of that witness as given by him is considered as primary evidence. Testimony of the person based on opinion of another person is inadmissible in the absence of examination of the informant as a witness. Therefore, the testimony of P.W.1 regarding the stand taken by him qua the sales statistics would be inadmissible in evidence as the Chartered Accountant who had signed Ex.P3 was not examined nor the 101/137 http://www.judis.nic.in O.S.A.No.170 of 2020 person who had signed Ex.P7 was examined. Thus, in terms of Section 65 of the Indian Evidence Act, the secondary evidence would be inadmissible in the absence of an explanation given in support of non-examination of the authors of Ex.P3 and Ex.P7. In terms of Section 66 of the Indian Evidence Act, the secondary evidence of the contents of the documents refer to Section 65 Clause (a) shall not be given unless the party proposing to give such secondary evidence as previously given to the party in whose possession or power the document is such notice to produce it as it prescribed by law and if no notice is prescribed by law, then such notice if the Court considers reasonable under the circumstances of the case. Thus, the settled legal position is that mere production and marking of a document as exhibit by the Court cannot be held to be a due proof of its contents but the situation may be difficult where the documents are marked with consent. Therefore, the learned senior counsel for the respondent is right in his submission that both the documents, namely, Ex.P3 and Ex.P7 marked through P.W.1 are inadmissible as he had no personal knowledge about the contents nor he had verified any documents to establish its authenticity. Therefore, the said 102/137 http://www.judis.nic.in O.S.A.No.170 of 2020 evidence has to be eschewed.
78.Much reliance was placed on the evidence of P.W.6, Dilipan, S/o. Mohan Kumar who deposed that he had been purchasing his needs from M/s.Mariappan Wholesale Traders at Mannady, Chennai. The said witness was a salesman in slippers. He has stated that P.W.5 is his friend and he knew him because he purchased things from his shop. Further he stated that he had deposed on a request made by P.W.5, he has never deposed as a witness in any other proceedings of complaint with respect to confusion of food products. Thus, it could be seen that the evidence of P.W.6 apart from being vague could easily be stated to have been at the instance of P.W.5 who is the wholesale dealer dealing with the plaintiff's products and as rightly contended, the evidence of P.W.6 cannot be the sole reason to hold that the defendant had passed off its products as that of the plaintiff as it is the Court which should form the opinion and from the answers given during the cross examination. It is clear that P.W.6 is not a person with average intelligence to decide the plea of deception, he has to be treated as an ignorant customer, 103/137 http://www.judis.nic.in O.S.A.No.170 of 2020 who is unaware of the generic names of the products and/or brands. Therefore, the evidence of P.W.6 can in no manner come to the aid and assistance to the plaintiff to prove the theory of deception or deceptive similarity of the product of the defendant to that of the product of the plaintiff.
79.The next most crucial issue is with regard to the finding rendered by the learned Single Bench that the word 'MAGIC' is laudatory and common to trade and none can claim proprietary right thereof to the exclusion of other traders. It cannot be disputed by the plaintiff that there are several food products which use the word 'MAGIC' and the defendant to support their stand that the word 'MAGIC' is a common trade usage has marked Ex.D19- LAYS MAGIC MASALA, Ex.D44 series, BALAJI MAGIC, MAGIC MASALA KURKURE, KITCHEN MAGIC MASALA, JANAK MAGIC NOODLES MASALA, MAGIC MAZZA MIX, MAGIC JEERA MASALA. Furthermore, as could be seen from Ex.D43, 546 applications have been filed before the Trademark Registry seeking registration of the word 'MAGIC' as a 104/137 http://www.judis.nic.in O.S.A.No.170 of 2020 trademark in relation to food products falling in Classes 29 and 30.
80.The learned Single Bench rightly noted the meaning of the word 'MAGIC' from the Chambers dictionary to mean marvelous and exciting from the new Shorter ... Oxford dictionary to mean superlatively good, excellent, fantastic. Therefore, the word 'MAGIC' is undoubtedly laudatory. Equally right is the learned Single Bench in coming to the conclusion upon consideration of the evidence placed on record that both the words 'MAGIC' and 'MAGICAL' are common to trade, more particularly, in the food industry. In the light of the law which we had referred supra, if the word 'MAGIC' is common to trade, none can claim any proprietary interest over such expression. The word MASALA is extensively used in India and describes Indian spices and obviously the plaintiff cannot claim any exclusive right over the word 'MAGIC' nor had they claimed in the present proceedings. Then what would be the combination 'MAGIC MASALA' or 'MAGICAL MASALA'. 'MAGIC' and 'MAGICAL' is to denote something in superlative being excellent, cut above the rest, etc. By adding the prefix 'MAGIC' or 105/137 http://www.judis.nic.in O.S.A.No.170 of 2020 'MAGICAL' before MASALA is with an intention to give twist to the spice which is provided to the customer in a sachet packed and sealed and kept inside the package containing uncooked raw bland noodles. The package also consists instructions to the customer as to how the noodles has to be cooked and at what stage, the masala which is contained in the sachet has to be added. On the plaintiff's own showing, they have different types of masalas, there were three variants of masalas which were packed as sachets and kept inside the packing containing raw noodles. They being CLASSIC MASALA, MAGIC MASALA and CHINESE MASALA. Therefore, if we are to accept the case of the plaintiff, are we to accept that the plaintiff would be entitled for protection of the mark CLASSIC MASALA OR CHINESE MASALA. The answer to this obviously should be in the negative as no person can claim exclusive right over the word CLASSIC or for that matter CHINESE. The plaintiff cannot dispute the fact that the noodles which is kept inside the packing is raw, uncooked and bland to which upon following the instructions given to the customer, by adding the spice provided in a separate sachet, it gives taste and flavour and becomes edible. Therefore, the plaintiff by 106/137 http://www.judis.nic.in O.S.A.No.170 of 2020 adopting the words CLASSIC MASALA, MAGIC MASALA and CHINESE MASALA has used the same only to describe the flavour of the masala contained in the sachet and by no stretch of imagination it can be held that the plaintiff's conceived the term MAGIC MASALA as a sub-brand. Therefore, if we were to accede to the case of the plaintiff by observing that they are entitled for protection of the word MAGIC MASALA, it will fall fowl of the law laid down in the decisions referred above as it would amount to granting protection to a common descriptive expression in superlative terms which even a registered user is not entitled to.
81.Thus, it is clear that the use of the word MAGIC MASALA in the plaintiff's product is a clear indication of the products kind not in the noodles but the flavour of the masala which is kept in a separate sachet inside the main packet. Indisputably, the plaintiff has not taken any steps to register the word MAGIC MASALA which it has claimed to be a sub-brand to their main brand SUNFEAST YIPPEE. Had the plaintiff applied for registration of the word MAGIC MASALA, would they have been entitled to the same? 107/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Section 9 of the Trademarks Act, 1999 deals with absolute grounds for refusal of registration. Sub-section (1) of Section 9 speaks of three contingencies where the trademark shall not be registered, namely, (a) if it is devoid of any distinctive character, (b) which consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service and (c) marks which consist exclusively of marks or indication which have become customary in the current language or in the bonafide and established practices of the trade.
82.Assuming a registration is permissible, the limits on effect of registered mark is as per Section 30 of the Act. In terms of the said provision, an action for infringement of a registered mark would not be maintainable if the use is in accordance with honest practices in industrial or commercial matter and is not such as to take unfair advantage or be detrimental to the distinctive character of repute of the trademark (registered). This provision 108/137 http://www.judis.nic.in O.S.A.No.170 of 2020 explicitly states that there was no infringement if the use of the mark is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage to the distinctive character or repute of a trademark. The following are few illustrative cases where there can be no infringement, namely, (i) where the use is in relation to goods or services to indicate the kind, quality, quantity, etc. of the goods or of rendering of services, (ii) the use of a trademark in a manner outside the scope of registration where a trademark is registered subject to conditions or limitation, (iii) where a person uses the mark in relation to goods or services for which the registered owner had once applied and had not subsequently removed it or impliedly consented to its use, (iv) a trademark registered for any goods may be used in relation to parts and accessories of other goods or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin and (v) the use of the registered trademark be one of two or more registered trademark which are identical or similar in exercise of the right to the use of that trademark. Therefore, even assuming the appellant/plaintiff had a registration in their favour, they would not be entitled 109/137 http://www.judis.nic.in O.S.A.No.170 of 2020 to any protection in terms of Section 9 read with Sections 30 and 36 of the Trademarks Act.
83.We add a caveat to this observation as has been culled out in various decisions, if such mark had acquired a distinctiveness then such person would claim for protecting such a mark. Before the marks which fall under Section 9(1)(a)(b)(c) are considered being entitled for protection as a trademark, they have to establish distinctiveness having enjoyed an undisturbed mark for a considerable number of years.
84.Upon consideration of the evidence of P.W.1 through whom Ex.P3 and Ex.P7 were marked, we have held them to be not admissible and cannot be of assistance to the plaintiff. Therefore, the necessary corollary would be that the plaintiff has not established that their product have acquired distinctiveness within a short span of less than three years to be entitled to protection as a trademark. Therefore, the learned Single Bench was right in its decision in refusing to grant a decree of injunction. 110/137 http://www.judis.nic.in O.S.A.No.170 of 2020
85.One other fact which has weighed in the minds of the learned Single Bench is that the respondent is the prior user of the mark MAGIC and this conclusion has been arrived at by examining Ex.D8-Masala-Ae-Magic, Ex.D11-Maggi Magic Cubes, Ex.D29-Maggi Magical Meal Times and Ex.D31-Maggi Dal Magic. The argument of the learned senior counsel for the appellant is that the learned Single Bench has rendered a finding that the plaintiff is the prior user of the word MAGIC MASALA for instant noodles. MASALA is a word which denotes Indian spices and condiments and no person can claim exclusivity over the said word/expression. The word MAGIC/MAGICAL are laudatory in character, exclusivity can be claimed by none. Therefore, the combination of the word MAGIC MASALA/MAGICAL MASALA can never be entitled to protection. Therefore the findings of the learned Single Bench that the plaintiff is the prior user of the word MAGIC MASALA for instant noodles can hardly be a reason to accord protection to the plaintiff to use the same as a trademark and maintain a passing off action against the respondent. The learned Single Bench has rightly concluded that 111/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the respondent/defendant is the prior user of the word MAGIC and they have proved by document during trail that they have been using the word in several of the food products, substitutes and additives, etc. Therefore, the ultimate conclusion arrived at by the learned Single Bench merits acceptance.
86.Mr.P.S.Raman, learned senior counsel submitted that the appellant has established the Trinity test as laid down by the Hon'ble Supreme Court in the case of Syed Mohideen vs. P.Sulochana Bai. By placing oral and documentary evidence before the learned Single Bench that the appellant has gained goodwill for their product, the respondent had misrepresented and passed off their goods as that of the appellant, consequently, there has been damage to goodwill. It is further submitted that goodwill and reputation need not be for several years, placing facts, the appellant had established that within a short span of time the appellant had established a good reputation in the market. It has been held in the case of Satyam Infoway Ltd, that it is not necessary for the plaintiff to prove long user to establish reputation in a passing off action. Further, it is submitted that the learned Single Bench 112/137 http://www.judis.nic.in O.S.A.No.170 of 2020 failed to appreciate the evidence placed on record and the finding rendered by the learned Single Bench are perverse and when such is the state of affairs, the impugned judgment requires to be set aside. In support of such contention, reliance was placed on the decision of the Hon'ble Supreme Court in the case of Sebastiao Luis Fernandes and the decision in the case of Irappa and others vs. Chidanandappa and others [MANU/SCOR/03161/2019], further, by referring to paragraph Nos. 211, 212 and 241 of the impugned judgment. The Court having held that the respondent felt threatened by the rapid inroad made by the appellant's 'MAGIC MASALA', therefore, decided to use 'MAGICAL MASALA', the Court erred in holding that the appellant is not entitled to succeed in the passing off action as there is no passing off by the respondent. Though the Court in paragraph No.211 of the impugned judgment observed that the respondent was certainly inspired by the adoption of the expression 'MAGIC MASALA' by the plaintiff in 2010 for its 'SUNFEAST YIPPEE Noodles' rendered a contrary finding stating tha such adoption cannot be said to be malafide. Further, it is submitted that the conclusion in paragraph No.242 of 113/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the impugned judgment holding that the respondent has not made any misrepresentation to ride upon the alleged reputation and goodwill of the appellant while using the expression 'MAGICAL MASALA' is contrary to the finding that the respondent must have felt threatened by the appellant's rapid inroad into the food industry, particularly, in the instant noodles. There is also an observation that the product of the appellant was successful and that the respondent was inspired by the expression 'MAGIC MASALA'. Further, it is submitted that the Court held that 'MAGIC' is not used as a flavour descriptor by the plaintiff as there is no flavour known to the word which is called 'MAGIC', however the Court proceeded to hold that 'MAGIC MASALA', 'CLASSIC MASALA' and 'CHINESE MASALA' were used to describe the name of the flavour and not the sub brand and accordingly answered issue No.7 against the appellant and such finding is erroneous.
87.The Court referred to Halsbury's Laws of India, Volume 20(1), wherein it has been stated that trademarks can be laudatory and still registrable and the Court also referred to the decision in the case of Godfrey 114/137 http://www.judis.nic.in O.S.A.No.170 of 2020 Philips India Limited vs. Girnar Food & Beverages (P) Limited [(2004) 5 SCC 257], while concluding held that the appellant has used the expression 'MAGIC MASALA' in a laudatory manner to praise the masala in the sachet and such laudatory epithet cannot be given monopoly or protection as has been held by Courts. Further, it is submitted that in paragraph No.242 of the impugned judgment, there is an observation that had the respondent not used the word 'MAGICAL MASALA', the appellant/plaintiff could have perhaps at a later point of time made a claim that the expression 'MAGIC MASALA' had become distinctive and therefore was entitled for a monopoly. Though there was such an observation, in paragraph No.226 the Court held that the appellant/plaintiff did not intend to use 'MAGIC MASALA' as trademark or sub-brand. Further, the Court ought to have seen that the suit was for a passing off action and not for infringement of registered mark. Further, it is submitted that as held in the case of P.Sulochana Bai, registration is no defence in a passing off action. As held in SNJ Distilleries Ltd., disimilarity in label is no defence in passing off. Further, it is submitted that there is an observation in the impugned judgment that the appellant was the first to use 115/137 http://www.judis.nic.in O.S.A.No.170 of 2020 'MAGIC MASALA' in instant noodles and the Court having held so ought to have granted the injunction as prayed for as they are the first to use in the particular product. In this regard, reliance was placed on the decision in Future Logitic Pvt. Ltd. vs. Future Logistics Solutions Pvt. Ltd. [MIPR 2009 (3) 0170 (Madras)]. Further, it is submitted that the appellant had been using the words 'MAGIC MASALA' as a sub brand as held in Societe Des Products NESTLE S.A. vs. Gopal Agencies [(2005) 30 PTC 63(DEL)], sub- brands are also entitled to protection.
88.It is further submitted that the respondent is estopped from contending that the plaintiff's 'MAGIC MASALA' is not a trademark because the respondent has filed an application for trademark registration of Masala- Ae-Magic [Ex.P9] and has initiated proceedings against third parties from stopping registration of the mark and therefore, the principle of estoppel will apply to the respondent. In this regard, reliance was placed on the decision in Blue Hill Logistics vs. Ashok Leyland Limited [(2011) 4 CTC 417]. It was further argued that merely because several other persons are using the same 116/137 http://www.judis.nic.in O.S.A.No.170 of 2020 trade name for their products it would not by itself come in the way of the Court in considering the claim of parties to the suit on its own merits and the defence common to the trade is not available to the respondents. In this regard, reliance was placed on the decision in the case of Balamurugan Modern Rice Mill vs. Subbulakshmi Modern Rice Mill [MANU/TN/0994/2005].
89.With regard to the first aspect, namely, whether the appellant had fulfilled the trinity test as pointed out in P.Sulochana Bai, it has been held that passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three elements are (1) goodwill owned by a trader, (2) misrepresentation and (3) damage to goodwill. What is important in the case on hand is whether on account of use of the words 'MAGIC MASALA' did the appellant acquire goodwill. As observed earlier, the appellant did not use the word 'MAGIC MASALA' as a sub brand but to describe the flavour of the 117/137 http://www.judis.nic.in O.S.A.No.170 of 2020 masala in a separately sealed sachet kept inside the packed noodles. The oral and documentary evidence which the appellant heavily relies upon is with regard to goodwill which they have established for their SUNFEAST YIPPEE products. There is no acceptable evidence to show that the goodwill and reputation said to have been earned by the appellant was relatable to the words 'MAGIC MASALA'. If such is the position then there can be no damage to any goodwill on account of the word 'MAGIC MASALA'. If that is so, the appellant should have established that they acquired goodwill for CLASSIC MASALA, they acquired goodwill for CHINESE MASALA as well. The case of the appellant as could be seen from the plaint and the evidence of P.W.1 is that they have made a dent in the instant noodles market. This claim made by the appellant has not been established to be on account of use of the words 'MAGIC MASALA'. As observed by the learned Single Bench there is absolutely no similarity in the packing. The appellant would state that they have filed a suit on account of the phonetic similarity between the word 'MAGIC' and 'MAGICAL'. However, we find that the case as pleaded in the plaint, more particularly, in paragraph No18 is that the 118/137 http://www.judis.nic.in O.S.A.No.170 of 2020 defendant's mark is visually, phonetically and deceptively similar. The learned Single Bench on considering the facts on record, wrappers, lettering, the colour scheme found that there is no similarity, much less deceptive similarity. Consequently, there can be no visual similarity. The claim of phonetic similarity can arise only if the plaintiff has established the case that the word 'MAGIC MASALA' is a trademark or it is a sub-brand. In the course of our discussion, we have upheld the finding of the learned Single Bench that the appellant did not used the words 'MAGIC MASALA' as a sub- brand but only as a flavour descriptor. This finding is deducible from the plaintiff's own case that there are three variants of masala. Therefore, they can never plead the case that the words 'MAGIC MASALA', 'CLASSIC MASALA' and 'CHINESE MASALA' are sub brands and they are entitled for protection. CLASSIC, MAGIC and CHINESE are all prefixes attached to the word MASALA to indicate the flavour of the masala inside the sachet. Therefore, not one of the three trinity tests have been fulfilled by the appellant and therefore, the learned Single Bench rightly dismissed the suit. 119/137 http://www.judis.nic.in O.S.A.No.170 of 2020
90.The appellant seeks to read the impugned judgment in a truncated fashion, referring to certain observations contained in a few paragraphs and argues that the finding is contrary to those observations. In our considered view the procedure adopted by the appellant is a thorough misreading of the impugned judgment. It is a cardinal legal principle that the judgment has to be read as a whole and if it is done, the ultimate conclusion arrived at by the learned Single Bench is to deny relief to the appellant on the ground that they were not entitled to the reliefs pleaded, not established a case for passing off, not established a case of malafide use of the alleged sub brand of the appellant. Therefore, merely because there is an observation that the appellant was the first to use the words 'MAGIC MASALA' in the instant noodle segment that by itself can in no manner improve the case of the appellant as the appellant has failed on all other grounds including failure to fulfill the ingredients of passing off action.
91.While on this issue, it would be necessary to note as to what is goodwill of a trademark. It relates to inherent value of the trademark, it is the 120/137 http://www.judis.nic.in O.S.A.No.170 of 2020 recognition of the mark among consumers and the extra earning power that it generates. So far as a well known mark, reputation is sufficient for passing off action. In fact the High Court of Delhi has held that the mark “Maggi” is a well known mark entitled for protection. The elements of goodwill are such as Company's good reputation, loyal consumer base, brand identity and recognition. Therefore, at best the appellant can state a case that they have earned goodwill for M/s.ITC Limited, a Company which has earned reputation and a loyal consumer base and on account of which they have gained recognition. None of these features can be remotely relatable to the words 'MAGIC MASALA'. On the own showing, the appellant's trademark is ITC-SUNFEAST YIPPEE, the product is instant noodles, the flavour of the masala are of three kinds which has described in the packing and therefore, the appellant was rightly denied the relief of injunction.
92.The decision in the case of Needle Industries (India) Limited vs. Sanjay Jaiswal and others [2002 (24) PTC 646(DB)(Mad)] was relied on by 121/137 http://www.judis.nic.in O.S.A.No.170 of 2020 the appellant to support their argument of malafide adoption of the mark. It was contended that the respondent has offered no explanation whatsoever for adoption of the mark 'MAGICAL MASALA' and they felt threatened, as observed by the Court, that the appellant has made inroads into the market and captured substantial instant noodles market share. The respondent has been successful in establishing through documentary evidence before the learned Single Bench that they have been using the word 'MAGIC' in several of their products for several decades. The attempt of the appellant to get over the same is by arguing that those products are not ready to eat food products but are flavour enhancers, masalas, etc. Unfortunately, the test which the appellant wants us to apply is a wrong test because admittedly the word MAGIC has been used by the respondent in several of their products and all are products used for food preparation which would fall within the same class under the Act. In fact, it is the appellant who had failed to establish as to how they zeroed in the words “MAGIC MASALA” when they were fully aware of the position that the respondent was using the word “MAGIC” in several of their products concerning the food industry. We can stretch the issue a little 122/137 http://www.judis.nic.in O.S.A.No.170 of 2020 further by going to the extent of making an observation that it is the appellant's conduct which can be regarded as not bonafide as they have sought to ride piggy back on the goodwill at the cost of the respondent. Therefore, in our considered view the decision in the case of Needle Industries would go a long way to support the case of the respondent.
93.Reliance was placed on the decision in the case of N.Ranga Rao and sons vs. Anil Garg and others [2006 (32) PTC 15 (Del.)], that was a case where there was a resemblance of the colour scheme used by the plaintiff and the defendant, there was similarity in colour pattern and phonetic similarity in trade name and prices and the Court held it is a deliberate attempt to pass off the goods and granted a decree of permanent injunction. The said decision is factually distinguishable and cannot be applied to the case of the appellant.
94.Reliance was placed on the decision in Hiralal Prabhudas vs. Ganesh Trading Co. and others [1984 (4) PTC 155 (Bom)] for the 123/137 http://www.judis.nic.in O.S.A.No.170 of 2020 proposition that proof of actual confusion by one party and burden of proof on the other. In the said case, the Court found that there is evidence on record that the deception was actually caused and that confusion actually resulted.
95.We have on facts found that evidence of P.W.6 cannot be relied upon, he is a person who does not even know the generic names of the products, P.W.5 is a wholesaler of the appellant, obviously would toe the line of the appellant. P.W.5 and P.W.6 are close friends. In any event, the decision as to whether the goods have been passed off is a decision to be taken by the Court and not for the witnesses to say.
96.The appellant raised a contention that the respondent is estopped from contending that the word MAGIC is laudatory and no proprietary right can be claimed over that especially when they have opposed another party from using the word MAGIC. If this contention is to be tested for its correctness and if it is to be examined as to whether the principles of estoppel can be put against the respondent, equally we may have to test as to whether 124/137 http://www.judis.nic.in O.S.A.No.170 of 2020 such principle has to be applied to the appellant/plaintiff because the appellant has submitted before the Registrar of Trademarks with regard to their right to use the mark SUNFEAST MILKY MAGIC which was challenged by Parle Products Private Limited in a opposition proceedings. The respondent has referred to the pleadings made in the said opposition proceedings wherein they have contended that no single trader can monopolize a common dictionary word which is used in a descriptive manner by numerous traders. The respondent seeks to establish the said stand by seeking to mark certain additional documents which appears to be not disputed by the appellant as it is their own document available in the Registry and certified copies can be obtained. Though we are not inclined to entertain the application for marking additional documents at the appellate stage, yet the Court can take judicial notice of certain admitted facts which are before statutory authorities. The appellant resists the prayer for marking additional documents on technical grounds. Therefore, in our considered view the appellant would not be entitled to plead the Doctrine of Estoppel against the respondent because they have filed an application for trademark registration 125/137 http://www.judis.nic.in O.S.A.No.170 of 2020 of Masala-Ae-Magic [Ex.P9] and initiated proceedings against third parties from stopping registration of the mark MAGIC MASTI on the ground that the word MAGIC has used in DAL MAGIC is exclusive to the respondent. If such is the case pleaded by the appellant, then obviously the same plea will hit against them as they have taken a plea that several traders are using the word MAGIC with respect to several goods including biscuits in the market and search on the website of the Trademark Registry revealed that there are several traders who are registered and/or has applied for trademarks comprising of the word MAGIC in Class 29 and 30. In fact, the respondent would contend that P.W.1 is guilty of committing acts of perjury on account of making false deposition on oath in the present suit and according to the respondent, this came to their notice only in the month of July 2020 while examining the appeal paper book and in view of the misrepresentation and false deposition given on behalf of the appellant, the appeal itself is liable to be dismissed. Therefore, such plea of estoppel raised by the appellant is mischievous and deserves no consideration.
126/137 http://www.judis.nic.in O.S.A.No.170 of 2020
97.Having held the word MAGIC is a mark which is common to food industry and not exclusively used by the appellant, no distinctiveness can be attached to the same nor has the appellant established distinctiveness qua the goods and the business of the appellant, to the exclusion of other traders. Apart from that, we have approved the finding of the learned Single Bench that the word MAGIC is laudatory epithet describing the quality of the Masala sold along with the bland noodles of the appellant under the trademark ITC SUNFEAST YIPPEE. While on this, it would be relevant to refer to Section 9 of the Act which deals with absolute grounds for refusal. Sub-section (1) of Section 9 of the Act stipulates what constitutes absolute grounds for refusal of registration, namely, (a) trademarks which are devoid of any distinctive character, (b) trademarks which consists exclusively of marks to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods and (c) trademarks which consists exclusively of marks which have become customary in the current language or in the bonafide and established practices of the trade. Proviso under Section 9(1) provides that a trademark shall not be refused 127/137 http://www.judis.nic.in O.S.A.No.170 of 2020 registration if before the date of application for registration it has acquired a distinctive character as a result of use made of it or is a well-known trademark. Thus the object of Section 9, is that a trademark which has been demonstrated to be distinctive in the market shall be regarded as distinctive in law as well and be registrable. Sub-section (2) contains similar provisions as contained in Section 11 of the Trade and Merchandise Marks Act, 1958 with certain additional references of emblems, names, etc. Sub-section (3) prohibits registration of a mark, if it consist exclusively of shape of goods which result from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods. Section 35 of the Act deals with saving for use of name, address or description of goods or services. This section commences with a non- obstante clause and states that nothing in the Act shall entitle the proprietor or a registered user of a registered trademark to interfere with any bonafide 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, of any of his predecessors in business, or the use by any person of any bonafide description of the character or 128/137 http://www.judis.nic.in O.S.A.No.170 of 2020 quality of his goods or services. Thus, this provision comes to the aid of the bonafide user and he is protected from the registered user causing any interference to the bonafide use of his own name or his predecessor in business, his place of business or bonafide description of the character or quality of the goods or services.
98.In British Sugar PLC, the High Court of Justice-Chancery Division was dealing with the case where the plaintiff claimed extensive use of the common word 'TREAT' wherein it was held that a common laudatory word is naturally capable of application to the goods of any trader other than one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. It was further held that this is all the more so when the mark has been used in conjunction with what is obviously taken as a trademark. In the said case, the word 'TREAT' had been used for about five years with 'Silverspoon' but it was not proved that the public regarded as a trademarks, reliable badge of trade origin on its own and further the use was only for what 129/137 http://www.judis.nic.in O.S.A.No.170 of 2020 was essentially an ice cream topping and it did not cover the full range of goods covered by registration. In the said case, British Sugar Plc relied upon a market survey as is done by the appellant in the case on hand. There the survey was conducted by the National Opinion Polls [NOP] which conducted an omni bus survey by trained interviewers visiting homes of people selected essentially at random. The Court after considering the various questions posed by the interviewers to the randomly selected public, it was held that in the case of common or apt descriptive or laudatory words compelling evidence is needed to establish distinctive character and in particular, mere evidence of extensive use is unlikely to be enough on its own.
99.The case of the appellant with regard to alleged confusion largely hinges upon the evidence of P.W.5 and P.W.6. We have held that the evidence of P.W.6 is unworthy and P.W.5 obviously would be an interested witness because he is the wholesaler of the appellant's products having been their distributor/vendor of the appellant's tobacco products. That apart, the market survey report which was relied by the appellant and marked through P.W.1 130/137 http://www.judis.nic.in O.S.A.No.170 of 2020 has been held to be inadmissible. Applying the decision in British Sugar Plc, in the absence of compelling evidence for showing distinctive character of a laudatory word, the appellant was rightly refused the relief of injunction as prayed for.
100.In McCain International Limited, it was a passing off action where the plaintiff was the first to introduce their product with a coined name 'Oven Chips'. The question was whether it had acquired distinctiveness and whether the defendant's adoption of that name in conjunction with their brand name sufficiently distinguishing was entitled for an injunction. It was held that a descriptive name does not indicate the source of the goods but the nature of the goods. 'Oven Chips' being a descriptive name is not so far fetched or fanciful as to indicate that all oven chips emanate from the same source. One of the plea raised by McCain was that they have spent substantial amount of money on advertising and it was held that spending substantial money on advertising is not a test for passing off but the test is whether there is deception. This decision is an answer to the contentions 131/137 http://www.judis.nic.in O.S.A.No.170 of 2020 raised by the appellant that they had spent substantial sums of money on advertising.
101.In Horlick's Malted Milk Company, the House of Lords was deciding the question as to whether “Malted Milk” is merely a descriptive term, wherein it was held that when a name, truly descriptive of an article, has always been associated with the particular name of the manufacturer, then a monopoly of the name of the article, apart from the name of the manufacturer, is almost impossible to acquire; and, accordingly, it is almost impossible to succeed in a passing-off action, the substantial ground of which would be the assumed possession of such a monopoly.
102.In The Gillette Company and others, the second defendant started manufacturing and marketing products with the mark “EKCO FLEXGRIP”, the plaintiff filed a case against the second defendant in the German Court during 1997, as it had come to know that the second defendant was using the mark “FLEXGRIP” in respect of its two products. However, no case was 132/137 http://www.judis.nic.in O.S.A.No.170 of 2020 filed against the defendant at that time inspite of the fact that the plaintiffs had already filed application in 1995 for registration of its trademark in India. In the plaint, it was alleged that they came to know about the use of the trademark “FLEXGRIP” in India in the last week of July 1999 only. It was held that the word “FLEX” and “GRIP” are descriptive words and while taking this opinion one is also influenced by the fact that the word“FLEXGRIP” is descriptive in nature because of the use of the word “GRIP” that too used in relation to pens and other writing instruments. The question which fell for consideration was whether there would be confusion and deception in the minds of the customers and the Court compared the complete trademark in totality and held that confusion is unlikely. The Court held that the trade names of the product of the parties to be compared are 'LUXOR PAPER MATE FLEXGRIP' vs. 'EKCO FLEX GRIP' and not FLEXGRIP alone; the word 'FLEX' and 'GRIP' are descriptive words; it was unlikely that consumers would be confused when the two marks are compared.
133/137 http://www.judis.nic.in O.S.A.No.170 of 2020
103.By applying the decision in The Gillette Company to the facts of the present case, the correct manner of comparing both the products, that of the appellant and the respondent is ITC SUNFEAST YIPPEE Instant Noodles MAGIC MASALA vs. NESTLE MAGGI XTRA DELICIOUS MAGICAL MASALA. If such a comparison is made, there is absolutely no confusion in the minds of the ultimate consumer and the appellant cannot compare the words MAGIC MASALA with MAGICAL MASALA and claim that it is deceptively similar.
104.In the case of Magic Safe Trade Mark, an application was made for registration of the unused trademark 'MAGIC SAFE' in in respect of safes, cash safes, etc. It was refused by the hearing officer on the ground that the word 'Magic' was laudatory and the mark did not qualify for registration under Section 9(1)(d) or 10 of the Trade Marks Act, 1938 (as amended). The applicants appealed to the Secretary of State. The application was refused holding that the word 'Magic' was plainly being used as a laudatory epithet for the goods and would be seen as such and did not qualify for registration. 134/137 http://www.judis.nic.in O.S.A.No.170 of 2020 It was further held that once it was recognized that 'Magic' was a laudatory epithet there could be no assurance, prima facie, that other honest traders might not be embarrassed by registration of the mark.
105.In the said opinion, there was reference to other opinions where it has been held that MAGIC is a very well known word and is not directly descriptive of any aspect of the goods claimed and it is very much in doubt that realistically it will be seen by purchasers of the goods sold under the mark as an indication that the goods are of superior quality. In relation to the goods claimed, the word MAGIC was to be seen as purely fanciful and non- descriptive. Reference has been made to Collins English Dictionary which includes among the meanings of 'Magic': - 'Any mysterious or extraordinary quality or power'. The word is used from time to time in a figurative sense to describe anything which operates in such a novel, fast or effective way that it appears to operate 'by magic'. Reference was made to a Dictionary of Slang and Unconventional English (8th Edition) published by Routledge, Keegan and Paul Inc. in 1984 which defines “MAGIC” as Excellent; first rate; 135/137 http://www.judis.nic.in O.S.A.No.170 of 2020 adjective of general approbation; etc. Thus it was concluded that MAGIC SAFE does not qualify for registration and also it cannot be distinctive. This decision/opinion would aptly apply to the case on hand to decide against the appellant.
106.Thus, for all the above reasons, we conclude that the appellants have not made out a case to interfere with the judgment and decree in C.S.No.231 of 2013 dated 10.06.2020 and accordingly, the appeal fails and is dismissed. Consequently, connected civil miscellaneous petitions are closed as unnecessary. No costs.
(T.S.S., J.) (V.B.S., J.)
10.11.2020
Index : Yex
Speaking Order
cse/abr
136/137
http://www.judis.nic.in
O.S.A.No.170 of 2020
T.S.Sivagnanam, J.
and
V.Bhavani Subbaroyan, J.
cse/abr
Pre-delivery Judgment made in
O.S.A.No.170 of 2020 &
C.M.P.Nos.8555, 8559, 9158 & 8117 of 2020
10.11.2020
137/137
http://www.judis.nic.in