ITC v. Nestle: War for a Descriptive Mark

Introduction:

Intellectual property rights used to protect the creation of mind. In this respect, trademarks are usually symbols, drawing, shape and packaging of goods, used to create a distinctive image of the various goods and services in the market. It is meant to give protection to a certain mark used to define a good and service, as this mark is what helps identify a particular good or service to the consumer. Each of these marks are unique in their selves, and in today’s competitive business environment, it becomes very essential for the manufacturer to maintain the unique image of their goods or services. Hence, this is why the importance of trademark protection arises.

The original creation of the mind, which is the drawing, the symbol or the shape and packaging, etc. is the subject matter in the case of trademark.

In India, Trademarks are regulated under the Trademarks Act, 1999[1]. As per the statutory definition of a trademark, a trademark can be protected only when it can be:

1. Represented Graphically
2. Distinguishable from the goods and services from other’s good and services[2]

Descriptive Mark

Descriptive marks are considered to be a weak kind of a trademark and generally don’t work as a trademark and are not granted registration either. These marks constitute of a word or words, which usually define or describe an attribute or characteristic of a product. Furthermore, these marks, being merely descriptive words in nature, are only granted trademark protection, when after a long time standing in the market, they’ve gained a unique position and have become almost like a second name of the product. Some examples of descriptive marks are ‘cold and creamy’ for ice cream, ‘choco treat’ for chocolate-based goods, etc. Some examples of descriptive marks, which have been given protection due to the long time standing in the market and acquired distinctiveness are AIRTEL, Best Buy, American Airlines, etc.

But it is not easy to get these marks registered. As per the Sallaki Case,[3] it was argued by the defendant that since their product is made up of the Sallaki plant, hence the word should be granted the status of a descriptive mark. But precisely this was held by the court against the defendants, that the plant Sallaki used to make many other products as well, and hence, a monopoly cannot be granted. Similarly, in the case of Cadila Healthcare vs. Gujarat Co-Operative Milk Marketing Federation Ltd[4], the Delhi High Court had held that the use of word ‘Sugar-free’ cannot be monopolised.

International Trademark Laws with respect to Descriptive Laws

Various instruments like the Paris Convention[5], Madrid Convention[6], Trademark Registration Treaty[7], etc., exist on the international level to provide trademark protection.

Under the Model Law,[8] descriptive marks are excluded from trademark protection. As for the U.S. Trademark Act[9], a descriptive mark is also similarly defined. If it describes the characteristic, quality, feature or use of the good or service, then it would be deemed to be a descriptive mark. But similar to the Indian law, with a long-time standing in the market and by acquiring a secondary meaning, it can be registrable under the trademarks act.

Case Brief

The case of ‘Magic Masala’ aka ITC vs. Nestle[10] had been a long war over the descriptive mark. Over a period of 7 years, the court has finally closed the case on 10^th June, 2020.

The case was first filed under Order IV Rule 1 of O.S. Rules and Order VII Rule 1 of C.P.C., read with Sections 27, 134 & 135 of the Trade Marks Act, 1999, by ITC (Plaintiff) claiming that the mark of ‘MAGIC MASALA’ has been used by the defendants, which was originally theirs and has since gained immense profits. Thus, the defendants should be restrained from using the mark and be liable to the damages.

The court had rejected the application of the plaintiffs based on the following reasonings:

• The plaintiffs had argued that the defendants had made use of the words ‘MAGIC MASALA’ on the packaging of their product from the year 2013, while the plaintiffs had been using it from 2010. It was held that indeed the plaintiffs were the first ones to use the two words ‘Magic masala’ together, but the use of those words cannot be held to be with malafide intention, as the words are common words, which can be used by anyone.
• It was contested that as per the judgement of Godfrey Philips India Ltd Vs. Girnar Food & Beverages (P) Ltd[11], even descriptive marks can be given protection. Further, the plaintiffs had claimed that the words ‘magic masala’ were used as a flavour description. Upon these the Madras H.C. had held, even if the terms ‘masala magic’ were descriptive, they cannot be given monopoly because, firstly, the words could not have been used a flavour description, as there is no flavour known as ‘Magic’ and secondly, though the word ‘masala’ can be used to describe the flavour, it was used in a laudatory manner, which cannot be granted a monopoly.
• Further, the court held that no registration application was filed for the words “magic masala’ when the same was done for ‘Yippee’, then it can be observed that initially no intention was there to get ‘magic masala’ trademarked.
• As per a comparative analysis on the whole packaging, differences regarding the design, colours, etc were found, on the basis which it could not have been held that there could be a confusion in the mind of the consumer. Hence, the claim by the plaintiff regarding the damage incurred was also rejected.

In the final decision, the court had dismissed the suit and no relief was given to the plaintiffs.

Conclusion

We can say that after this long battle for a descriptive mark, we can understand its importance in the competitive world of commerce. This judgement will also have big impacts on how a descriptive mark can be defined.

It can ultimately be said that as far as descriptive words are considered, providing them with trademark protection is not easy at all. No law has strictly mentioned the dimensions of a descriptive mark, though, from various judicial assessments, we can confidently say that any word which may be descriptive in nature, but if it is in any way or manner laudatorily used or is extremely commonly used, it shall not be granted monopoly. As for the exceptions, we can say that if any product has passed the test of time and has acquired a secondary meaning as related to the product, then it might a well be granted protection.

Thus, it again becomes essential that under all the trademark laws of the world, whether it is a distinctive mark or any trademark in general, it shall be distinguishable from other products and services to be protected.

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References:

[1] Trademarks Act, 1999

[2]Chakraborty, Rahul, Growth of Intellectual Property Law and Trade Marks (January 31, 2009). Available at SSRN: https://ssrn.com/abstract=1335874 or http://dx.doi.org/10.2139/ssrn.1335874

[3] The Himalaya Drug Company vs Gufic Limited, A Public Limited, AIR 2004 Bom 278

[4] Cadila Healthcare vs. Gujarat Co-Operative Milk Marketing Federation Ltd, 2009 (41) PTC 336 (Del.)

[5] Convention of the Union of Paris for the Protection of Industrial Property, 48 TRADEMARK REP. 1320 (1958) (Including the revisions adopted at Lisbon)

[6] Gabriel M. Frayne, A Few More Thoughts on Possible United States Adherence to the Madrid Arrangement, 57 TRADEMARK REP. 477 (1967)

[7] David B. Allen, The Trademark Registration Treaty: Its Implementing Legislation, 21 IDEA 161 (1980)

[8]United International Bureaux for the Protection of Intellectual Property (Birpi) Model Law For Developing Countries On Marks, Trade Names, And Acts Of Unfair Competition Geneva 1967. (1967).

[9] Trademark Act, (1946) Section 2(e)(1), 15 U.S.C. §1052(e)(1)

[10] ITC Ltd v. Nestle India Limited C.S.No.231 of 2013

[11] Godfrey Philips India Ltd Vs. Girnar Food & Beverages (P) Ltd.,(2004) 5 SCC 25