Any Body Can Use 'Magic Masala' And Magical Masala'- Supreme Court Dismisses ITC's Plea Against Nestle

ITC had filed a suit before the Single Judge of the Madras High Court, inter alia, seeking an injunction against Nestle, from using deceptively similar expression to market its product, claiming it amounted to passing off. ITC had introduced 'Magic Masala' flavour in 2010, whereas Nestle started using the expression 'Maggi Xtra Delicious Magical Masala' later in the year 2013. The main contention raised by ITC was that the phrase 'Magic Masala' being integral to its composite trademark i.e. 'Sunfeast Yippie! Noodles Magic Masala', the general public associated their product with the expression 'Magic Masala'. It further contended that the phonetically similar phrase used by Nestle was used with dishonest intention to create confusion in the minds of the consumers. The Single Judge denied that anyone can have exclusive rights or monopoly over the laudatory expression 'Magic Masala'. Rejecting the argument that two distinct brands can create confusion in the minds of the consumers, he dismissed the suit. As the matter went to the Division Bench on appeal, the High Court upheld the order passed by the Single Judge.

A Bench comprising Justices M.R. Shah and BV TLENagarathna refused to interfere with the order of the Division Bench. At the outset, the Bench stated that the words challenged are not the trademark of ITC -

"Your trademark was not magic masala. Your trademark was altogether different. Anybody can use Magic masala or magic or masala."

Senior Advocate Harish Salve, appearing on behalf of the Petitioner, informed the Court that he was on the point of the phonetic confusion that has been created in the minds of the general public. He submitted -

"My case is very different and on this Evidence was led and the evidence was not considered. Whether two expressions create phonetic confusion and I am on confusion, not even saying deceit. Whether two expressions create confusion or not is a matter of first impression."

Mr. Salve argued that the trade practices and by what name products are referred to while buying and selling can only be shown by means of evidence. According to the evidence before him, the products were sold by the name of their ingredients and not their brand names. However, the Division Bench stating that it is not a matter of evidence discredited two of the three witnesses of ITC, which in the humble opinion of Mr. Salve was an incorrect finding of the Court.

"How a product is bought and sold, it is a matter of evidence...These products are bought and sold by their name of the ingredients like ..two-minute noodles, wheat noodles or masala noodles. My product is also sold as Magic Masala noodles. Although my trade name...I am Yippee, he is Maggi...How a product is bought and sold and what is the trade practice is a matter of evidence. I have evidence to say..whose evidence can I lead...of shopkeepers. They come and say that people ask for Masala noodles...If it was bought as Maggi v. Yippee there was no confusion...Division Bench says this is not a matter of evidence and discredits two of the three witnesses...It is a little mistake in my respectful submission."

Not satisfied with the submission, the Court opined that masala or non masala were merely subdivisions and the loyalty of the consumers lies with the brand names i.e. 'Maggi' and 'Yippee'.

"Whether they want Maggi or Yippee noodles..Masala and Non Masala are subdivisions. Loyalty to Maggi or Yippee comes first."

As per Mr. Salve's evidence, he argued to the contrary. He stated that the products were bought and sold as 'Magic Masala' and not as 'Maggi' or 'Yippee'.

Keeping in view the demographics of the consumers of the two products, the Bench did not find merit in the arguments forwarded by Mr. Salve and thus dismissed the Special Leave Petition.

"Those who purchase this Maggi...they are very intelligent...They are not villagers that they would not know...Consumers can discern between the two names...Today's generation they know better than us, they are more intelligent, they know by colour also…No reason to interfere...SLP stands dismissed."

[Case Title: ITC v. Nestle]