• Sonal Sinha

ITC Ltd v. Nestle India Limited (C.S.No.231 of 2013)

Judgement delivered by Justice C. Saravanan on 10th June

The Madras High Court finally laid to rest the six-year long battle between the two leading

companies in the instant noodles’ marker, ITC’s ‘Yppie’ and Nestle’s ‘Maggi’. The case has

been a long overdue since it was instituted in 2013. The 112-page long judgment not only

resolves the conflict that had so arisen, between the two brands, but also clears the air

regarding the concept of descriptive mark and passing off, stating that laudatory words like

‘Magic Masala’ cannot be claimed by anyone.

ITC Limited, an Indian multinational conglomerate, had introduced ‘Sunfeast Yippie Noodles’ with a flavour named ‘Magic Masala’ in the year 2010. In the year 2013, Nestle’s Maggi launched a deceptively similar brand of noodles by the same name, ‘Magical Masala’.

Consequently, ITC filed an application in the Madras High Court seeking permanent

injunction against Nestle from using the mark ‘magical masala’, claiming that it was

deceptively similar to their mark ‘magic masala’ saying that though it is descriptive, yet it

has acquired secondary meaning.

Before going on to what the court concluded, let is us brush up on the concepts related to

the issues at hand. The Section 9 of the Trade Mark Act, 1999 lays down the absolute

grounds for refusal of registration of Trade Marks. Marks that do not have distinctiveness or are incapable of distinguishing the goods and services from others in the market.

Further, the mark should not be a functional trademark, i.e., the quality, kind, quantity, or intended use of the goods or services must not be indicated by the mark which is being proposed to be registered. The mark cannot be descriptive. Shapes of specific goods cannot be registered as trademark if the shape is a part and parcel of technical result. For example, the word “spherical” cannot be registered for a ball.

The SC held that the term ‘Magic Masala’ is a suggestive mark rather than a descriptive mark, as it requires the customer to use their imagination suggesting the description or the

characteristic of the product. A descriptive term is the one that directly conveys about the

qualities or characteristics of the product, while a suggestive term only hints at it. The mark magic masala conjures up a kind of an imagination in the mind of the consumer that a certain magical change will come into effect without completely describing the ingredients or the taste, hence, it cannot be said to be descriptive. It is a distinctive mark having acquired its own secondary meaning. And since it was held to be distinctive, the plaintiff was given the relief of injunction.

On assessing the laws related to Trade Mark, the court held that words ‘Magic’ and ‘Masala’

are commonly used terms in the trade, hence it is not possible by anyone, including the

plaintiff and defendant to claim monopoly over the term. These words are frequently used

in the Indian culinary and food industry. Further, the use of the term by plaintiff was not

unique itself, as even before the use by them, the words ‘Magic Masala’ were already in use

by a number of food brands, most common of them was the Lay’s Magic Masala potato


The bench also held that if the plaintiff (ITC) had filed a trademark application to register the expression Magic Masala as a word mark, it would have been rejected by the Trade Mark Registry under Section 9 of the Trade Marks Act, 1999.

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