2010 (2) TMI 1254 - HC - Indian Laws

Appellant's Use of 'Yo' Not Trademark Infringement: Appeal Allowed

The court held that the appellant did not use 'Yo' as a trade mark on its products, thus infringement under Section 29(1) was not established. The ... - Issues Involved:1. Whether the appellant uses the expression 'Yo' (with or without the exclamation mark '!') on its Maggi Cuppa Mania products as a trade markRs.2. If the answer to point 1 is in the negative, would the present case fall under Section 29(4) or (5) of the said Act as held by the learned Single JudgeRs.3. Whether the expressions 'Masala Yo!' and 'Chilly Chow Yo!' can be said to be flavour descriptors and hence eligible for protection under Section 30(2)(a) of the said Act against an infringement actionRs.Detailed Analysis:Point 1: Use of 'Yo' as a Trade MarkThe court examined whether the appellant used 'Yo' as a trade mark on its Maggi Cuppa Mania products. It was determined that the expression 'Yo' was used in conjunction with 'Masala' and 'Chilly Chow' to describe the two flavors of the product, not independently or as a part of its trade mark, which remains 'Maggi'. The court noted that for a mark to qualify as a trade mark, it must be capable of distinguishing the goods and services of one person from those of others and must be used in relation to goods or services for indicating a connection in the course of trade. The court concluded that the use of 'Yo' in the expressions 'Masala Yo!' and 'Chilly Chow Yo!' does not satisfy this requirement, as it does not indicate a connection between the appellant's products and the respondent. Consequently, the use of 'Yo' was not considered as a trade mark, and infringement under Section 29(1) was not made out.Point 2: Applicability of Section 29(4) or (5)The court then considered whether the case falls under Section 29(4) or (5) of the Trade Marks Act, 1999. Section 29(4) requires that the mark in question be identical with or similar to the registered trade mark, used in relation to goods or services which are not similar to those for which the trade mark is registered, and that the registered trade mark has a reputation in India. The court found that while 'Yo' could be regarded as identical or similar to the respondent's registered trade mark 'Yo!', there was no material to establish that 'Yo!' had a reputation in India. Additionally, the appellant provided a plausible explanation for the use of 'Yo' as an expression to attract the attention of customers, particularly the youth, which was considered a due cause. Therefore, Section 29(4) was not applicable. Similarly, Section 29(5) was not applicable as the appellant did not use 'Yo!' as its trade name or part of its trade name.Point 3: Flavour Descriptors and Section 30(2)(a)The court examined whether the expressions 'Masala Yo!' and 'Chilly Chow Yo!' could be considered flavor descriptors under Section 30(2)(a) of the Act. Section 30(2)(a) provides that a registered trade mark 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. The court found that 'Yo' was used as an integral part of the expressions 'Masala Yo!' and 'Chilly Chow Yo!' to describe the characteristics of the goods, specifically the flavors of the noodles. The court noted that the appellant's argument that 'Yo' was used to provide emphasis to the flavors was at least arguable and could not be dismissed at the threshold.Conclusion:The court concluded that the appellant did not use 'Yo' as a trade mark, and hence, infringement under Section 29(1) was not made out. Additionally, the conditions of Section 29(4) and (5) were not satisfied, and the expressions 'Masala Yo!' and 'Chilly Chow Yo!' could be considered flavor descriptors under Section 30(2)(a). Therefore, the appeal was allowed, and the impugned order was set aside.