Today we will study a very important topic related to Trademarks, it is common whenever we are starting a business, we as seller try to name the products with words which are somewhere related to our products like for example for payment related services with try include words such as Pay in our proposed Trademarks for example payTM paypal etc. For naming a mattress we tend to select names which have some reference to products such as sleep or wake, namely wakefit or sleepwell.
But there is a very thin line that exists between naming a brand as descriptive or suggestive or as coined words.
In today’s article we will be reading about which words one must avoid completely while selecting a brand name or which names are allowed to be taken and are treated as coined terms through reading of judgements about famous cases.
Recently in case of ITC ltd. vs Nestle India ltd. It was held that “Magic and Masala- common words in Indian Food Industry; no one can monopolise them” –it was the decision of the Madras High Court in the dispute of ITC ltd. vs Nestle India ltd. (C. S. No 231 of 2013), bringing an end to their seven-year long legal battle over-
Whether the words ‘magic’ and ‘masala’ can be construed as trademarks,
Whether the claims of passing off held any substance.
The case was initiated by ITC Ltd. (the Plaintiff) in 2013 against Nestle India Ltd. (the defendant) for passing off their goods using a deceptively similar expression and packaging.
The plaintiff is a huge company dealing mostly with tobacco and cigarettes and forayed into the FMGC (fast moving consumer goods) market in 2010, launching an instant noodle brand called ‘Sunfeast Yippee!’ which came in different flavours- ‘Classic Masala’ and ‘Magic Masala’, of which the latter was tremendously successful.
On the other hand, Nestle has been a household name since the 1970s, owning the biggest shares in the market, as also using the term ‘magic’ or ‘magical’ for several of its products over the years (‘Maggi Masala-Ae-Magic’ a taste enhancer in 2009, ‘Maggi Magic Cube’ as a flavour solution in 2003, etc.). In 2013, it adopted the expression ‘Magical Masala’ as a flavour descriptor for its brand of instant noodles- Maggi.
The plaintiff contended that the expression ‘Magic Masala’ became highly popular and an inseparable part of the Yippee! Noodles, to the extent that the general public had come to associate the term ‘magic masala’ to refer to the noodles of the plaintiff and plaintiff alone. The defendant’s usage of a similar and deceptive expression was intended to cheat unwary and gullible customers including children and housewives to buy the defendant’s instant noodle with the expression ‘Magical Masala’ as that of the Plaintiff’s ‘Magic Masala’.
It was further contended that the defendant intended to dilute the plaintiff’s proprietary rights over ‘Magic Masala’ and goodwill associated with it which has been in the market since 2010. It was submitted that the Plaintiff had adopted the expression prior in time, as also to distinguish it from other such goods in the market. The Defendant must have felt threatened and hence adopted a deviously similar expression for its own brand of noodles. It intended to ride on the goodwill of the Plaintiff and cut into its market share, by resorting to unfair trade practices.
The defendant contended that they were a prior user of the word ‘magic’ in their products and that the Plaintiff cannot claim exclusivity over them as the words ‘magic’ and ‘masala’ are common in their trade. The Plaintiff has used the expression ‘magic masala’ as a flavour descriptor and product descriptor, and therefore cannot claim any proprietary rights as under the Trademark Act, 1999. The words ‘magic’ and ‘masala’ are commonly used in the food industry, and being so familiar, no one can claim any proprietary rights over them.
Also the term ‘Magic’ was used by the defendant in a laudatory sense. It was used merely to describe the taste of the collection of spices, i.e., the masala. The defendant adduced evidence to show that even the Plaintiff had used the term ‘Magic masala’ for the noodles as flavours, namely, ‘Classic Masala’, ‘Magic Masala’ and ‘Chinese masala’.
Even the packaging of the two noodle packs were different. It is therefore submitted that no action for passing-off was maintainable against the defendant. It was improper to accuse the defendant of passing off their goods as that of the Plaintiff when the packets itself were distinct and the expression widely used.
###Decisions and findings:
Justice C. Saravanan decreed that both the words, ‘Magic’ and its derivative ‘Magical’ were common to the trade and widely used in the food industry. Thus, both the parties could not claim monopoly over them. The parties had been mutually influenced by each other in tying up their brands of instant noodles with the expression ‘Magic Masala’ and ‘Magical Masala’ respectively.
In the same vein, the Plaintiff has used the expression in a laudatory manner. And laudatory epithets cannot be given monopoly or protection as has been held by the Courts. Thus the defendant’s use of a similar expression cannot be called malafide, as it was a legitimate adoption of a marketing strategy.
If however, the use of the expression by the plaintiff had gone on uninterrupted for a long time, then by way of acquiring secondary meaning, the plaintiff might have succeeded in getting a word mark for the same. But the defendant pre-empted this by using a similar expression within three years of the plaintiff.
For the issue of passing off, the Court came to the conclusion that the wrappings of both the contentious noodle packets was different. They differed in colour, layout, font and the overall get up was distinct enough to not cause any confusion in the minds of the consumer. Thus no case of passing of can be made out. In the words of J. Saravanan-
“As there is no visual or ocular similarity between the two wrappers, there is no scope to infer passing-off from an ocular or visual comparison of the two labels.”
The injunction prayed for was denied as no case of passing off could be made out, and the case was thus dismissed with no costs.
From the above dispute arises the question-
What exactly constitutes as a ‘common word’?
What words can be held to mean something so generic that cannot be used to trademark a product? In trademark law, common words are generally not advised to be used as trademarks as they are liable for frivolous litigation. There are high chances that using a very common word as a trade mark will lead to vexing hindrances in the future.
A quick perusal of what is meant as a trademark– A trademark is a unique word/ symbol/ icon that makes an individual’s product strikingly different from other similar products in the market, and is closely associated with the proprietor. The general public relates the trademark with the proprietor and a relationship of long lasting goodwill and trust can be founded upon it. A trademark holds the power to make or break a product in the market.
Section 2 (zb) of the Trademark Act, 1999 defines ‘trademark’ as follows:
“trade mark” means a mark capable of being represented graphically and 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.
Similarly, Section 2(m) of the act defines- “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
###As given in the case of ITC Ltd vs Nestle India Ltd (C. S. No 231 of 2013), –
“A trademark establishes the relation between the product and the proprietor. It is intended to grab the attention of the consumer instantly to make a on the spot decision whether to buy the goods or service of a proprietor. They collectively represent the intrinsic value of the goods or service offered by the proprietor.
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 are 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.
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.”
Common word: A common word denotes a generic term, a word that is widely used in the respective field/ industry for a relatively long period of time. Yet it can be trademarked, subject to some important conditions. A person can register a common word as a trademark at his own peril. There are several future encumbrances attached to such a generic word being used as a trademark. A common word can be considered as a trademark only if it fulfils certain conditions.
The following cases are exceptions with those conditions:
1. Acquires a distinctive character-
The Trademark Act of 1999, in Section 9 proviso, states that a “trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.”
Thus, commonly used words in the industry can be registered as a trademark if they have acquires a secondary significance or secondary meaning within the market. If the words have been so associated with the product that the public has begun to view them as pertaining only to that product of that particular proprietor, then the said words can be eligible for being registered as trademarks.
In the case of Mrs. Ishi Khosla vs. Anil Aggarwal and Anr (2007 (34) PTC 370 (Del), the Delhi High Court observed that- “to acquire secondary meaning it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight”
Facts: Mrs. Ishi Khosla founded a proprietorship firm called ‘Whole Foods’ which dealt with all sorts of healthy food products. She had been using the trademark extensively since 2001 and had built a tremendous customer base in a very short span of time. It has been voluminously, continuously and extensively used by her in the course of trade/business to the extent that the trademark ‘Whole Foods’ has always been perceived as indicative of the source of the plaintiff with respect to food items.
The plaintiff found the defendant’s deceptively similar product in the market in November, 2004, packaged with the words ‘Diet Whole Foods’. The plaintiff thus filed a suit for passing off as well as for infringement of copyright.
The defendant contended that the plaintiff did not have any proprietary right over the words ‘whole foods’, it also had not used the term for a long and uninterrupted time in the market, and it had not gained any distinctive character or secondary significance in the market so far.
‘Diet whole Foods’ is different from the plaintiff’s ‘whole foods’. Besides the words belong to the common English language and are used in a descriptive sense and hence cannot be protected against infringement. They merely refer to the quality of the goods sold.
Court’s decision: The mark ‘Whole Foods’ had a different meaning than the dictionary meaning which was- natural foods which have not been processed. The plaintiff used it to lay emphasis on ‘healthy and healing foods’ which provide good nutrition and promote a healthy life. The Plaintiff’s ‘Whole Food’ is just low fat foods with nutritional value or fat foods turned into ‘healthy foods’ by processing. This is proved by the products marketed by her like rice, oils, roasted namkeen and bakery foods, which can’t be covered under the ordinary dictionary meaning.
The plaintiff has untiringly and relentlessly projected her meaning to the public via her website and articles, and thus, ‘Whole Foods’ has acquired secondary character and has come to be associated with the plaintiff’s products.
The Court held, “To acquire secondary meaning/distinctive meaning it is not necessary that product is in the market for number of years, as observed earlier. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight.”
Since its launch, the plaintiff’s business had soared and was enjoying comfortable profits and a stable place in the market. The defendants on the other hand had started using the impugned words three years after the Plaintiff. This means that they very well had the opportunity to observe the trends and gain undue benefits from using a trademark so similar to the plaintiff’s trademark. This was done by clever manipulation of adding the word ‘Diet’ before the entire trademark of the Plaintiff. This intention of the defendants becomes manifest as they have also adopted same style of the trademark and same labels/packing etc.
The ex-parte injunction granted on 09/03/2005 was confirmed.
Hence, a commonly used term, when it is used with a distinct meaning, and that meaning holds some importance in the market and becomes a hit overnight, it clinches a short cut to the road of trademarking and can be successfully protected.
- A unique combination of commonly used terms can be trademarked-
Sky Enterprise Private Ltd vs. Abaad Masala and Co. –
Commercial I. P. Suit (L) No. 1124 of 2019
The Bombay High Court on 08/01/2020 restrained the defendant from using the same combination and order of words ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’, both of which were the registered trademarks of the Plaintiff.
Facts: The plaintiff was engaged in the business of manufacturing, processing and selling all kinds of masala powders, spices, condiments, seasonings and other allied and cognate goods. The Plaintiff is a registered proprietor of the trademark ‘Star Zing’ (both as a label mark and a word mark), as also various other trademarks, with or without the words ‘Star Zing’, such as ‘White Chinese Pepper Curry Powder’, ‘White Chinese Pepper Seasoning’, ‘Black Chinese Pepper Curry Powder’, ‘Black Chinese Masala’, ‘White Chinese Pepper Masala’, ‘Black Chinese Pepper Masala’ and ‘White Chinese Masala’, in Class 30, all of which are used for marketing different masala powders of the Plaintiff. These registrations have been obtained during the year 2016-2017. The plaintiff submitted that all these marks have acquired a distinctive goodwill and reputation; these have, by their extensive and sustained use, come to be exclusively associated with the Plaintiff’s goods.
The contention was that the Defendant had adopted identical marks such as ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ in respect of its own goods. This use of identical marks could serve no other purpose than to gain undue benefits out of the reputation and goodwill of the Plaintiff in the market.
Previously, the Plaintiff had noticed the defendant selling goods with the mark ‘Star King white Chinese pepper masala’ and ‘star king black Chinese pepper masala’ and copying almost the entirety of the Plaintiff’s trademarks. Upon serving notice to the defendant, the defendant agreed not to sell anything with those marks anymore. Soon thereafter, the plaintiff again saw the defendant’s good in the market, now with a new prefix of ‘AMC Frize’ before the same mark. Thus the Plaintiff has a filed a suit for perpetual injunction against the Defendant and for passing off its goods as those of the Plaintiff’s.
The Defendant submitted that it has used the terms as description of its goods and not as trademarks. They are generic terms, carrying only descriptive value. The words ‘Black Chinese Pepper Masala’ and ‘White Chinese Pepper Masala’ are used by the Defendant in its trade dress, just as in the case of the Plaintiff, for identifying or indicating the kind, quality, and intended purpose of the goods. The words being common to the trade, the Plaintiff cannot claim proprietorship over them.
Court’s decision: The Court stated that the Trademarks of the Plaintiff are both- valid and subsisting and thus they are entitled to interim injunction restraining the world at large from using these trademarks in connection with similar goods, unless the registration of these trademarks by the Plaintiffs can be shown to be demonstrably or ex facie illegal or fraudulent or shocking to the conscience of the Court.
Further the Court held that individual words in a given case may be descriptive, but their peculiar combination may yet create a unique appearance or identity. Secondly, by virtue of a long history of trading, it is quite possible that the mark, though it contains descriptive words, may have come to acquire a distinctive reputation and association with the Plaintiff’s product alone and with no others. In all these cases, it is perfectly legitimate to obtain a registration and prevent use of identical or deceptively similar marks by others, in spite of the descriptive words forming part of the Plaintiff’s trademark.
Here the Court referred to the case of Godfrey Phillips India Ltd. vs. Girnar Food Beverages (P) Ltd. wherein it was held 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.”
Thus, even though the Plaintiff held no proprietorship over the individual words, it had the trademark of a ‘particular/unique combination’ and so no rival trader can use that particular combination and order which the Plaintiff uses. The rival traders can use those same descriptive words in any other combination or form, but they cannot do so in the exact same way as that of the plaintiff’s trademark.
The Defendant’s claim that the words were used as ‘descriptors’ was not accepted by the Court, which also said that the defendant could have used various other words or combinations to describe its product. The adoption of an identical mark gives away the Defendant’s malafide intention to take undue advantage of the plaintiff’s goodwill and reputation in the market. The defendant’s actions are very much likely to cause confusion in the minds of the consumers.
Accordingly the Defendant is restrained by an interim injunction from advertising or displaying or using directly or indirectly the impugned trademarks ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ or any other identical or deceptively similar trademark or words in their peculiar combination in connection with its goods.
Thus this case brought clarity to the principle that a trademark which is unique combination of descriptive/ common words which has also acquired reputation through use, is eligible for protection.
2. Protection of Common word Trademarks:
It is generally held that common words, which are not distinct enough, or are inherently weak, are incapable of being registered or protected. If the word is not distinct, it must acquire distinctness through secondary meaning.
What cannot be a trademark is specified in Section 9 (1) of the Trademark Act- The trade marks—
(a) Which are devoid of any distinctive character
(b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values and geographical origin
(c) Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,
Shall not be registered.
This means that there is a high probability of a common word trademark getting rejected, as there is a lack of distinctiveness.
The case of M/s Three-N- Products Pvt. Ltd vs M/s Kairali Exports and Anr – CS (OS) 709/2011 has made it clear that protection of a generic term as a trademark requires a greater degree of proof and a lot more effort from the person claiming Trademark rights over the mark. The case was decided by the High Court of Delhi on 03/01/2018.
Facts: In the present case, the Plaintiff Three-N-products is the registered proprietor of the mark ‘AYUR’ in various classes since 1984. It came to know about the Defendant’s use of the mark ‘AYURVASTRA’ in 2009 when the defendant filed for its registration. The Plaintiff claims the mark to be nearly identical to its own trademark. They therefore sent a cease and desist notice to the defendant, to which the defendant allegedly admitted their improper usage and agreed to discontinue with the mark.
However, the Plaintiff again came across the goods of the Defendant and found the same marks to be still in use, and thus instituted the present suit. The Plaintiff now prayed for a permanent injunction restraining the Defendant.
The Defendant contended that the word ‘ayur’ was publici juris, as it was derived from the word ‘Ayurveda’ and had come to denote the meaning that the product had Ayurvedic properties. It claims to be using the mark ‘AYURVASTRA’ with a unique logo, which is capable of identifying its own independent source of identity As such the plaintiff had also failed to prove that it had any goods in the same class as the Defendant which was using the word ‘ayur’.
Another contention was that the term ‘AYUR’ was considerably different from the defendant’s ‘AYURVASTRA’. The Defendant’s explanation of its mark was that it was a composite term consisting of ‘ayur’ referring to Ayurvedic properties and ‘vastra’ meaning clothes.
Court’s Decision: The court held that the plaintiff has based its suit primarily on the ground that the trademark of the plaintiff is an invented word and has no other meaning whatsoever. The entire basis of the claim of the plaintiff is that it has invented the word “AYUR” and by extensive use of the word “AYUR” and the association thereof with its goods since 1984, the said mark has acquired distinctiveness and is identified with the goods of the plaintiff alone.
The Court found this claim to be incorrect ex-facie, because the word ‘Ayur’ first finds mention in the Ancient Hindu Religious Texts, i.e., the Vedic Puranas, which have used the word ‘Ayurveda’. The word ‘Ayur’ means healthy life and ‘Veda’ refers to knowledge. The word “AYUR” has been used historically and is derived from the Hindu Vedic Texts, and thus the claim of the Plaintiff that they ‘invented’ the word, stands incorrect.
The Court further noted that the protection of a trademark is dependent on whether the mark adopted is generic, descriptive, suggestive, arbitrary or fanciful. The marks, which are generic, descriptive or suggestive have lower level of legal protectability and the marks, which are arbitrary or fanciful, have higher level of legal protectability.
|Low level of protection||High level of protection|
Here, the word ‘AYUR’ is neither fanciful nor arbitrary, and the Plaintiff cannot claim proprietorship over it per se. The Court further stated-
“It is not that a generic or descriptive mark will never have any legal protectability but the burden of proof on the person claiming distinctness in favour of a generic or descriptive mark is much higher. The plaintiff not only would have to show that the mark adopted by the plaintiff, because of its extensive use has acquired distinctness and is identifiable only with the goods of the plaintiff but also that the adoption of the mark by the defendants is identical and deceptively similar to the mark of the plaintiff.”
The Court also found the two contentious marks to be very distinct from each other. They differed in the colour schemes, fonts and total get up. The plaintiff also failed to provide any proof of how the goods of the Defendant and the Plaintiff would prove to be confusing for the consumers.
Thus the Court held the Plaintiff not entitled to any ad interim relief of injunctions.
This case is a good example of the perils of having a generic term as a trademark. The burden of proof is substantially higher on the person claiming proprietorship over the mark, and it has very little protection in the eyes of the law.
In trademark law, it is not advisable to go for common words/ generic terms as trademarks for the above stated reasons. It is a risk that the proprietor must carry on their own shoulders. But as is specified in Section 9 of the Trademark Act, there can be scenarios where the term has been in use for a long period of time and has acquired secondary significance in the market, only then the use of a common word as a trademark can be protected and registered. Thus the entirety of the validity of the ‘common’ trademarks depends upon the proviso to Section 9.