TaxTMI 
TaxTMI 
2020 (6) TMI 842
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....ding containers, cartons packs labels, prints, blocks, dyes, plates, moulds and other material bearing the mark/name "Magical Masala" which is deceptively similar to the plaintiff's "Magic Masala". iii. a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of offending mark "Magical Masala" and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after latter have rendered accounts; iv. The 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; and v. for costs of the suit. 2. The plaintiff was represented by Mr. P.S. Raman, the learned senior counsel and by Mr. C. Manishanker, the learned senior counsel. They made elaborate submissions on behalf of the plaintiff. They were assisted by the Mr. Arun C. Mohan and Ms. Divya Bhatt of M/s. Arun C. Mohan & Brinda C. Mohan, Advocates, the counsel on record on behalf of the plaintiff. 3. On behalf of the defendant, Mr. Hemant Singh, learned counsel made elaborate submi....
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....Sunfeast Yippee noodles" "Magic Masala" was well received and the distributors, traders and the consumers. 12. It is further submitted that general public associated "Sunfeast Yippee" noodles Magic Masala" with the expression "Magic Masala". It is submitted that brand "Magic Masala" was a run-away success for G the plaintiff and had cornered about 12.5% of the market share in the instant noodle segment within a short period of time. 13. Threatened by the plaintiff's stupendous success, defendant launched "Magical Masala" as a sub-brand. It is further submitted that the defendant copied the expression "Magic Masala" by slightly P tweaking it by adding a syllable "al" to the word " Magic". 14. It is the case of the plaintiff that the use of the expression "Magical Masala" by the defendant was intended to pass-off defendant's "Maggi xtra -delicious Magical Masala" as that of plaintiff's "Sunfeast Yippee" noodles Magic Masala" which is recognised as "Magic Masala". This according to the plaintiff amounted to passing-off and therefore the plaintiff has prayed for the above reliefs. 15. The defendant has filed a detailed written statement. In the written statement....
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....Masala" having admitted it to be a flavour descriptor in the annual reports? 20. For the recording of evidence, Mr. J. Krishnamoorty, District Judge (Retd.) was appointed as a Commissioner. The learned District Judge (Retd.) recorded the evidence painstakingly over a period of time. 21. At the time of filing of the suit, the plaintiff filed only nine However, during the Course of the trial, the p introduced other twelve documents apart from Exhibit P1 being authorisation given to the PW1 to depose evidence on behalf of the plaintiff. 22. Exhibits P1 to P22 were marked during chief-examination of plaintiff's witnesses. Exhibits P23 to P37 were marked during cross examination of DW1. In all, the plaintiff marked Exhibits P1 to P37 during the course of the trial. 23. On behalf of the plaintiff, six different persons deposed evidence as PW1 to PW6. Six proof affidavits were filed. These witnesses were subjected to cross-examination by the defendant. Exhibits D1 to D27 were marked during cross-examination of PW1. 24. On behalf of the defendant, Mrs. Dhawani Singh Rao was examined as DW1. A proof affidavit was filed by her. She was examined and later cross-examined by ....
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....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 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". P H 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 bef....
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.... D11 Colour print outs of photographs of Maggi Magic Cubes ( 4 sheets) D12 CA 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 "SunfeastYippee" noodles D18 series Print outs from the ITC portal. com of the financial results of the Plaintiff relating to quarters ending 30.09.2010, 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) D20 series Print outs of the trade mark registrations status and certificates taken from www.opindiaonline/gov/in whi....
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....er 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 AAC 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) 29. During the cross -examination of the DW1, Exhibits P23 to P37 were marked. They are as follows :- Exhibits No. Details of Exhibits P23 Copy of the Notice to produce documents dated 12.04.2018 issued by Counsel for plaintiff to the Defen....
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....ding expression "Magical Masala" by the defendant was later after copying it from the plaintiff. It was not only intended to enable the defendant to pass-off their product as that of the H S plaintiff's product but also to facilitate others to pass-off their goods as that of the plaintiff. 34. In the plaint, it has been averred that to distinguish its superior product from that of others, the plaintiff started using "Magic Masala" and therefore designed a distinct label comprising of several distinctive features. In order to protect the composite label comprising the aforesaid expression "Magic Masala", the plaintiff claims to have filed several trade marks applications under the law to protect the same and same were stated to be pending as on the date of the suit and registered vide Exhibit D20 (series). 35. It is further submitted that owing to its excellent quality and reputation, the plaintiff's "Magic Masala" had attained distinctiveness and a secondary meaning came to be associated with the plaintiff and none else. In this connection, reference was made Exhibits P2 and P2A (series). 36. It is further stated that the plaintiff had substantially invested by adv....
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....s Act, 1999. It is further submitted that the defendant cannot have a big brother attitude towards the plaintiff merely because the plaintiff was a late entrant. 43. Elaborating the above submission, on behalf of the plaintiff the learned senior counsel for the plaintiff, Mr. P.S. Raman submitted that being the market leader in the instant noodle market, the defendant was aware of the reputation gained by the plaintiff within a short period and the sub-brand "Magic Masala" came to be associated with the plaintiff. It is submitted that with a view to break goodwill and reputation R. associated with the plaintiff, the defendant launched their noodle with the RT offending sub-brand "Magical Masala" 44. It is submitted that the expression "Magic Masala" was not used as a "flavour descriptor" as was contended by the defendant. It was further submitted that is no flavour called "Magic" and therefore it is not correct to state that the expression "Magic Masala" was adopted as "flavour descriptor" by the plaintiff. 45. It is submitted that the adoption of the expression "Magical Masala" by the defendant was dishonest with an intention to trade and ride on the goodwill associated w....
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....ct that the defendant had also initiated opposition proceedings against the registration of the mark "Magic Masti" of another proprietor vide Exhibit P15, on the ground that it has been using the sub-brand "Magic" along with seasoning "Dal Magic" shows an inconsistent stand of the defendant. 53.It is submitted that defendant has itself admitted that the word "Magic" was capable of being protected in as much as the defendant has products brands such as "Maggi Real Magic", "Maggi Magic Cubes" (for flavour solutions) and "Maggi Masala-Ae-Magic" (taste enhancer) and "Dal Magic" (Seasoning). 54. It is submitted that since the plaintiff was the first to adopt the words/expression "Magic Masala" for noodles, it was not open to defendant copy the expression "Magical Masala" for noodles which is both deceptively and phonetically similar to the expression "Magical Masala" by mere addition of an additional syllable "al" to the word "Magic" from the plaintiff's aforesaid sub-brand. 55. In any event, the defendant has not produced any evidence to show that the defendant has adopted "Magical Masala" for noodles prior in time or prior to the plaintiff. In this connection, reference w....
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....ng expression "Magical Masala" by the plaintiff was clearly intended to cause the minds of the consumers and the retailers and to E passing-off. He submits that difference between the two sub-brands. viz "Magic Masala" and the "Magical Masala" was only in the syllable "al". Both the sub-brands for noodles were phonetically similar. 62. In this connection, he drew my attention to the depositions of PW2 & 3 wholesale dealers of the plaintiff and that of PW4 & 5 retailers of provision and that of PW6, a consumer, namely, Mr. Dileepan, who used to buy noodles and other household consumer goods from PW5. To establish goodwill and reputation, he also drew my attention to the report of Indian Market Research Board (IMRB) [Exhibit P7], a private company engaged in market survey. 63. Learned senior counsel also drew my attention to certain other documents to show that the defendant has itself trademarks which were descriptive words and had used them as sub-brands for their noodles and sauce and had successfully thwarted its competitors from using them. Therefore, the defendant cannot adopt a different standard. 64. A specific reference was also made to the deposition of PW6, a cust....
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....ing a list of both registered and pending applications in several classes in respect of several other goods for registration of the word marks containing the word "Magic" also goes to prove that the mark "Magic" is capable of protection under the Act. 71. He further submits that use of the word "Magic" by others is of no significance and it is not defence known in the law. In this connection, he relied on the decision of the Court in Novartis AG Vs. Crest Pharma Private Limited, 2009 (41) PTC 57 and the decision in Indian Shaving Products Ltd Vs. Gift Pack and Another, 2000 CLC 183. 72. It is further submit that the expression Magical Masala" is not found in Exhibit D29. It is further submitted that reliance placed on Exhibit D8 (series) is totally irrelevant as it deals with products other than instant noodles of the plaintiff. He therefore submits that Exhibit D8 (series ) is liable to be eschewed. 73.Mr. P.S. Raman, the learned senior counsel for the plaintiff referred to the following case laws :- i. Future Logitic Pvt. Ltd. Vs. Future Logistics Solutions Pvt. Ltd., MIPR 2009 (3) 0170; ii. Satyam Infoways Ltd. Vs. Siffnet Solutions (P) Ltd., 2004 (6) ....
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...., MANU/DE/0209/1999; xxx. Hindustan Unilever Ltd. Vs. Three-N-Products (P) Ltd., MANU/IC/0061/2012; xxxi. Reckitt Benckiser (India) Ltd. Vs. Hindustan Unilever Ltd., MANU/DE/0967/2008; xxxii. Hindustan Unilever Ltd Vs. Reckitt Benckiser India Ltd., MANU/DE/033/2014; xxxiii. Super Cassette Industries Ltd. Vs. Entertainment Network (India) Ltd., MANU/DE/0530/2004; xxxiv. Sony Kabushiki Kaisha Vs. Aashish Electronic and others, MANU/MH/1114/2005; xxxv. Reckitt & Colman of India Ltd. Vs. Jyothi Laboratories Ltd. and others, MANU/WB/0110/1999; 74. Learned Senior Counsel Mr. C. Manishankar appearing on behalf of the plaintiff submitted that several documents produced by the defendant during cross examination of the PW1 were inadmissible and therefore, this Court ought to ignore them. 75. Elaborating the submission, learned Senior Counsel Mr. C. Manishankar submitted that print outs from website of third parties cannot be relied upon. Similarly, it was stated that the Annual Report of the defendants are not relevant to establish that the defendant was prior adopter of the word "Magic". 76. He further submitted that Exhibit D29....
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....ence Act on behalf of the defendant was not accordance with the law. 81. Similarly, the learned senior counsel also submitted Exhibit D34 (series), Exhibit D35 (series), Exhibit D40 (series), Exhibit D41 and Exhibit D42 (series) were inadmissible as they were not accordance with Section 65B of the Indian Evidence Act, 1872. 82. As far as Annual Reports for the year 2009-2011 of the defendant, which was marked as Exhibit D38 (series), is concerned, it was submitted that same is irrelevant as there is no reference to instant noodles in the I.D image of "Masala-Ae-Magic". 83. Learned Senior Counsel Mr. C. Manishankar referred to the following case laws :- i. Life Insurance Corporation of India Vs. Ram Pal Singh Bisen, (2010) 4 SCC 491; ii. TVS Motor Company Ltd. Vs. Bajaj Auto Limited, order dated 18.07.2016 passed in A. Nos. 2119 and 2120 of 2016 passed by Hon'ble Mrs. Justice Pushpa Sathyanarayana - Unreported iii. Anvar P.V. Vs. P.K. Basheer & Ors., 2014 (10) SCC 473; iv. Ishwar Dass Jain Vs. Sohan Lal, (2000) 1 SCC 434; v. RakeshMohindra Vs. Anita Beri, (2016) 16 SCC 483; vi. H. Siddiqul Vs. A.Ramalingam, (2011) 4 SCC ....
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....scribing of cannot attain distinctiveness so to exclude others from using them. 89. According to the defendant, the expression "Magic" has been used to qualify the quality of the masala in the packet as "Magic Masala". It describes the masala in the sachet used for flavouring and for bringing taste to the bland noodles in the pack as wonderful /extraordinary / excellent / fantastic etc. It was used in a laudatory sense. It is therefore submitted that no action for passing-off was maintainable against the defendant based on the averments in the plaint. 90. It is further submitted that the plaintiffs' trademark is "ITC, "Sunfeast Yippee" and the instant noodle is sold in a combined pack consisting of bland noodles with a masala sachet in it. 91. In the written statement, it is further stated that the plaintiff has admitted instant noodles manufactured and sold by the plaintiff under the aforesaid three trademark in three different variants, i.e. flavours, namely "Classic Masala", "Magic Masala" and "Chinese masala" and that these expressions were used on the packaging of the instant noodles by the plaintiff with the aforesaid expression as a "flavour descriptor" of the m....
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....ld along with the bland noodles in the package. 100. To substantiate the same, the defendant also referred to a printout from the plaintiff's http://www.itcportal.com/media-centre website, namely,, wherein, the plaintiff has the brand in the wrapper as "Yippee" noodles" and that "Sunfeast Yippee" continues to wow consumers across the country. Its unique round block and long, slurpy and non-sticky noodles have created consumer delight. The range is available in three flavours of Magic, Classic and newly launched Chinese Masala. Sunfeast Pasta Treat continues to offer a delicious and nutritious range of Pasta products in 4 different flavours. 101. The defendant has also compared both the wrappers of the plaintiff and the defendant side by side to state that there is no case made out for passing-off as there is no similarity between the two and therefore the suit was misconceived. 102. It is further submitted that the suit has been filed to merely prevent bonafide and fair competition by claiming an unfair monopoly over the descriptive epithet, laudatory words or phrase or tagline which essentially constitutes a "flavour descriptor" for conveying the flavour, taste, character....
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....iptor was adopted by the defendant. 111. It is submitted that the expression "Magic Masala" or "Magical Masala" or "Classic Masala" or "Meri Masala" or "Masala Yo" are nothing, but flavour descriptors which are a common expression in the food industry and cannot be subjected to any proprietary right by any member of the trade to the exclusion of others. 112. According to the defendant, they are in any event the prior adopter of the expression/words such as "Magic" and "Masala" for atleast 9 or more of their products referred to supra for the taste enhancers in the year 2009 "Maggi Masala-Ae-Magic" vide Exhibit D40 (series), "Maggi Magic Cube" vide Exhibit D34 (series) as a flavour solutions in the year 2003 with the tagline "pinch of magic" and in Hindi "Chutkibhar Jadoo" and "Maggi Dal Magic" vide Exhibit D31 (series). 113. It is submitted that the defendant also ran a jingle for "Maggi Magic Cubes". Similarly, in the year 2003, the defendant had launched a taste maker for Dal called "Maggi Dal Magic". Thus, according to the defendant, the use of the expression "Magic" and "Masala" by the defendant was prior to adoption of the flavour descriptor "Magic Masala" by the plai....
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.... Milk xxv. Good life Slim Milk xxvi. Tropicana Slim Milk xxvii. Alaska Slim Milk xxviii. Good Milk Slim 117. It is further submitted that the products with the brand name Maggi has a tremendous market presence since 1974 in India starting with a turnover of Rs.0.02 Crore in the year 1972 to a staggering amount of Rs. 2377/- crores in the year 2012. 118. That apart, the defendant has claimed to have spent a whopping amount of Rs.112.9 crores in the year 2012 towards promotional expenditure which was pegged at Rs.0.89 crore in the year 1978. It is submitted that the trademark Maggi has attained the status of the well-known trademark and that the defendant has about 80% of the market share in the instant noodle segment and therefore it is improper to accuse the defendant of unfairly adopting a so-called trademark of the plaintiff to pass-off their Maggi noodles as that of the defendant. 119. The learned counsel appearing for the defendants relied on the following case laws: i. Laxmikant V. Patel Vs. Chetanbhai Shah @ anr., AIR 2002 SC 275. ii. Britannia Industries Ltd. Vs. ITC Limited, 2017(70) PTC 66 (Del) (DB). ....
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....isation in the Internal Market. xxviii. C & T Holding Aps Vs. Haribo Lakrids A/S, Denmark (EUIPO) xxix. I.T.C. Limited Company Vs. GTC Industries Ltd. & Another, 2002 (25) PTC 465 (Bom). xxx. Indchemie Health Specialities Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd. &Ors. xxxi. Marico Limited Vs. Agro Tech Foods Limited. (Descriptive sub-brand), 2010 (44) PTC 736 (Del.) (DB) 120. He also referred to the following :- i. Oxford English Reference Dictionary - Second Edition Meaning of MAGIC ii. Webster's New World Dictionary Meaning of MAGIC iii. Christopher Wadlow on Passing off iv. Mc Carthy v. Halsbury's Laws of England 121. It was further submitted that the defendant has also used 'Maggi Magic" food products in other markets 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", "Maggi Magic Chicken" etc. prior to 2010 as evident from documents forming part of Exhibit D36 (series). 122. Reliance was placed on the affidavit of DW1 in para 2A, it R was stated that RT say that....
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.... the plaintiff; ii. That the mark has been used as trade mark (Section 2(1)(zb)) so as to distinguish the Plaintiff's product from similar products of others in the trade and not to describe character or quality of masala; iii. That upon such exclusive and extensive use as trademark, it has acquired such level of 127. It is submitted that the plaintiff has not produced any distinctiveness, goodwill and reputation that it has come to identify the source and origin of instant noodles of the Plaintiff. 127. It is submitted that the plaintiff has not produced any evidence which proves that "Magic" or "Magic Masala" have acquired such distinctiveness, goodwill or reputation for following reasons:- i. All trade promotion is for the brand "Sunfeast Yippee" leading to plaintiff's instant noodles being identified by the brand "Sunfeast Yippee"; ii. Every retail invoices and purchase of Plaintiff's product are identified by their brand "Sunfeast Yippee" iii. The volume of sales given as Exhibit P3 is not admissible in evidence on account of mode of proof as the said document has not been adduced properly. The said objection was rais....
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....duct with the brand "Maggi". It is "Maggi" which is the trademark which identifies the defendant's product. The well-known character of the trademark "Maggi" has been recognized by the Hon'ble High Court of Delhi in the suit being Societe des D Products Nestle & Anr Vs. Shiny Electricals & Ors., CS (COMM) 1175 of 2016. 131. It is submitted that the goods are well distinguished by their well-known brands, "Sunfeast Yippee" and "Maggi" and considering the fact that the packaging is distinct with different get up and trade dress, there is no question of passing-off of goods of one for the other arises and any such claim is misconceived and is liable to be rejected. He therefore prayed for dismissal of the suit with cost. 132. I have considered the arguments advanced by Mr. P.S. Raman, the learned senior counsel who argued on behalf of the plaintiff. I have also considered the argument advanced by Mr. C. Manishankar, the learned senior counsel who made an elaborate submission on the admissibility of the exhibits introduced by the defendant. 133. I have considered the arguments of Mr. Hemanth Singh, learned senior counsel for the defendant. I have also considered the ev....
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....ectively represent the intrinsic value of the goods or service offered by the proprietor. They are the assets of the proprietors. A trademarks helps a proprietor to sell their goods or service. 139. Trademarks are intangible assets of proprietors. They are by themselves capable of being bought and sold like any other goods. They are the assets of the proprietors and is capable of being valued. In fact, even if there is change in ownership of the trademark and the same goods or services are offered by the transferee or the new proprietor of such mark, the consumer may continue to buy products or the services offered by such new proprietors. Thus, it is very power asset of a trader or service provider. 140. Once a mark or the brand has attained certain level of recognition and reputation, the buyers of goods or service may not even look beyond the brand or the mark . 141. The proprietors therefore invest their time, money, efforts and resources in promoting them through aggressive advertisement and sales promotion. Proprietors are therefore expected to choose them wisely before promoting them as their trademark or service mark. 142. However, often proprietors delude thems....
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....criptive mark. It is an inherently weak mark and is almost incapable of being protected and/or registered unless it has acquired distinctiveness due to its long and continuous use over a period of time to the exclusion of others. 150. Proprietor who chooses words or artistic work which are not distinctive and are inherently weak or is incapable of protection, run the risk of such mark trampled or used by others. Law will cannot come to their rescue and they are often left without any remedy. Descriptive marks may attain distinctiveness on account of its long use and if nobody else had used it prior in time. If the marks are invented or coined as a new word, it affords a higher decree of protection under law. 151. Therefore, before conceiving a mark to establish a trade connection, proprietors are expected to choose marks wisely which are either arbitrary, fanciful and/or at best suggestive of their product/goods/services to market. 152. If the mark is suggestive, it would require to pass the test of imagination for being protected. The more imagination is required on the customer's part to get the direct description of the product from the term, the more likely the term is....
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....ction if it has assumed a secondary meaning and identifies a particular product or as being from a particular source. 160. On the other hand, a "suggestive term" used as a mark which indirectly suggest the qualities and characteristics of the product may be registrable and protected. 161. Before an expression attains a secondary meaning in the eyes of the consumers, it has to go through a long and an arduous uninterrupted use. Such use are at the risk of being run-over or trampled and used by others. Before such words or expression achieve a secondary meaning, they are at the risk of being used by others in which case they loose their claim for protection under law. 162. If such a proprietor initiates an action for an injunction to exclude a subsequent user in their journey to distinguish such words as their marks, the Courts rarely rescue such proprietors. Such proprietors promote such words or expression as their marks at their peril. 163. Thus, the thumb rule under the law is that words or the expression which and are not distinctive are inherently weak and are therefore incapable of being registered or protected. 164. However, such words may become distinctive on....
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....them believe that they are indeed purchasing the goods of his competitor. 171. An action for passing-off is not merely confined to protect an unregistered trademark of a proprietor. It is also intended to protect overall colour scheme, get-up, layout and trade dress etc. adopted by a proprietor which his competitor unfairly copies and causes deception on the consumer and thereby inflicts a loss on the proprietor. 172. Loss to the consumer is the actual loss for the consumer is cheated by the competitor. Though a consumer suffers, rarely a consumer take action against the perpetrator unless the consumer approaches the Consumer Forum. 173. Loss to the proprietor in the case of passing-off is a direct reduction in sale, growth, dilution of the intrinsic value of the mark and risk of being exposed to unnecessary civil action and the expenses incurred in connection of burden of vigilient. 174. The purpose of passing-off action is not only to protect commercial goodwill but is also to ensure that the purchasers are not exploited and dishonesty intrading is prevented. For that the plaintiff must establish that his business or goods have acquired reputation. [Sir Shadi Lal Ente....
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....sing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 179. In Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries, (2018) 2 SCC 1, it was held that an action for passing-off is premised on the right of the prior user generating a goodwill and is unaffected by any registration of the mark under the Act. To prove and establish an action of passing-off, three ingredients are required to be proved by the plaintiff ie. Goodwill, misrepresentation and damages. Actual deception is not required [Century Traders Vs. Roshan Lal Duggar & Co., AIR (1978) 250(DEL)]. 180. In Eastman Photography Materials Company, Limited Vs. The Comptroller-General of Patents, Designs, And Trade-Marks Respondent, [1898] A.C. 571, it was observed as follows: "We would add upon this point that we think that where any English word would be rejected as not entitled to registration, no person ought to be permitted to register its translation into any other language. The question has been raised whether a word havin....
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....ntiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It would depend upon the volume of sales and extent of advertisement. 185. That apart, the Court has to view whether there is likelihood of confusion with the possible injury to the public and consequential loss to the appellant. Similarity in the name may lead an unwary user of internet of average intelligence and imperfect recollection to assume the business connection between the two. Thus, to main....
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....nd (iii) lastly, the false representation has injured the plaintiff's goodwill and not just its reputation. 11.1 In sum and substance passing off is really a tort of false representation whether intentional or unintentional whereby, one person attempts to sell his goods or service as those manufactured or rendered by another, which is, "calculated" to damage the goodwill of the other person. (See Erven Warnink BV vs Townend & Sons (Hull) Ltd 1980 RPC 31 at page93). Therefore, for the plaintiff to succeed, it will have to prove all three ingredients referred to hereinabove. (See Island Trading vs Anchor Brewery 1989 RPC 287 at page 295). 189. In Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories, (1965) 1 SCR 737:AIR 1965 SC 980, the Court recognised that 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 that of another. In the same decision, the Court held as follows: "30. The mark of the respondent which he claimed was infringed by the appellant was the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the responden....
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....here may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the mark as a whole does not confer any statutory right with respect to that part. 191. In F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. (P) Ltd., (1969) 2 SCC 716 at page 720, it was held as follows: "It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient, similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus, in Lavroma case [Tokalon Ltd. v. Davidson & Co., 32 Johnston said: RPC at 133 at 136] Lord "... we are not bound to scan in a question of the words as we would comparatioliterarum. It is not a matter for microscopic from the general and inspection, but to be taken even casual point of view of a customer walking into a shop ." 192. In Amritdhara P....
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....y brand/trademark "Sunfeast Yippee" noodles" to market instant noodle in 2010. Adoption of the offending expression "Magical Masala" by the defendant for marketing its instant noodle in 2013 was not bonafide. 197. It is submitted that defendant has copied the word "Magic" from the plaintiff's label by adding a syllable "al" to the word "Magic" cause confusion in the minds of the public. 198. The plaintiff claims that both "Magic Masala" and "Magical Masala" are the respective sub-brands and since the latter is phonetically similar to the former and since both the plaintiff and the defendant are in the same business, i.e. sale of instant noodles, there is deception and confusion and therefore the defendant was liable to be permanently injuncted. 199. It is submitted that the expression "Magical Masala" is phonetically similar to "Magic Masala" used by the plaintiff and therefore there is passing-off by the defendant as was demonstrated in the deposition of PW2 to PW6 and the report of IMRB vide Exhibit P7. 200. It is submitted that the adoption of the expression "Magical Masala" was calculated with a view to cause confusion in the minds of the consumer and therefore to p....
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.... also from other products in the food and cosmetic industry. 210. It would be also fair to conclude that the plaintiff was the first to use the combination of the two words i.e. "Magic" and "Masala" as "Magic Masala" for noodles in 2010. 211. The adoption of the expression "Magical Masala" by the defendant was inspired not only from the words "Magic" and "Magical" which are common to the trade but also from some of its own products. It was therefore certainly inspired from adoption of the expression "Magic Masala" by the plaintiff in 2010 for its "Sunfeast Yippee!" noodles. However, such adoption cannot be said to be malafide. It was a legitimate adoption by the defendant as no person can appropriate common and laudatory words. 212. There is no reason or explanation forthcoming from the plaintiff as to why the expression "Magical Masala" or for that matter "Magic Masala" was not adopted by the defendant earlier as it has used these words for one or more of its products and for a food festival earlier in 1986 [Exhibit D29]. 213. It also requires no detailed enquiry on facts draw a conclusion that the expression "Magic Masala" was in the contemplation of the defendant whe....
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....oods. A misspelt version of a wholly unregisterable word is itself construed as laudatory must have obvious significance of praise and must not require to be spelt out by a laboured process." unregisterable. " 218. Though there are divergent and conflicting views on the same subject by the same journal published in India and UK, in my view, it is perhaps on account of the solitary observation of the Hon'ble Supreme Court in Godfrey Philips India Ltd Vs. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 25 that " A descriptive trademark may be entitled to protection, if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source". 219. However, on facts it is to be noted that the expression "Magic" was not used as a "flavour descriptor" by the plaintiff because there is no flavour known to the world which is called "Magic". Therefore, the expression "Magic Masala" was not used as a flavour descriptor by the plaintiff. The plaintiff has used the word "Magic" to name the flavour in sachet as "Magic" and thus called it "Magic Masala". 220. It would therefore be incorrect to conclude on facts that the expression "Magic Masa....
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....mark also shows that the said expression was not intended to be used as trademark or a sub-brand by the plaintiff. 228. On the other hand, the plaintiff has registered the expression "Sunfeast Yippee!", "Yipee" and "Yipee!" [Exhibit D20 (series)] vide T.M. Application Nos.1651223, 1651224, 2301118 and 2301119 respectively. It has not filed a single trademark application for registration of the expression "Magic Masala" as a word mark. 229. The plaintiff has filed trademark application only for registration of composite label mark vide TM Application No.2088997 in Class 99 consisting of the expression "Sunfeast Yippee! noodles" and "Magic Masala" together with the artistic work vide (Exhibit D20) as captured in column below. 230. The word "Magic" is laudatory. It is incapable of being appropriated by the plaintiff. As such no person can claim any monopoly over the said word "Magic" or "Magical" or their derivative as they are common to the trade. Therefore, it is incapable of being monopolised by any trader. 231. In my view, neither the plaintiff nor the defendant can claim the monopoly over the respective laudatory words "Magic" or "Magical" along with common word "Masa....
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....ression "Magic Masala", "Chinese Masala" and/or "Classic Masala" considered for registration under the Trade Marks Act, 1999 subject to acceptance of a disclaimer to the expression "Magic Masala", "Chinese Masala" and "Classic Masala" by the plaintiff by the plaintiff. 237. On comparison of two wrappers in column below, it is evident there is no scope for concluding there could be any passing-off by the defendant. Both the wrappers are reproduced again below: 238. Overall colour scheme, layout, style and overall the get-up of the two wrappers i.e. of the plaintiff's "Sunfeast Yippee noodles" bearing the expression "Magic Masala" for its instant noodle and the defendant's "Maggi Xtra-delicious Magical Masala" are different. There is no scope for confusion. 239. Respective labels of the plaintiff and defendant are quite different in overall colour, scheme, get up, layout and trade dress. Each label, i.e. Exhibits P19 and P21 which have been reproduced in this Judgment, are a separate trade mark within the meaning of Section 2(zb) of the Trade Marks Act, 1999 and qualify for protection as whole. 240. The competing brands viz. "Sunfeast Yippee" of the plaintiff and "Maggi" ....