The Madras High Court has made it clear that laudatory expressions like "Magic Masala" and "Magical Masala" cannot be monopolised and use of similar expressions would not amount to passing off under the Trademark Act.
Justice C Saravanan gave the clarification while dismissing a plea by ITC, seeking to restrain Nestle India from using the expression "Magical Masala" on their noodles product.
ITC claimed that it has been using the expression "Magic Masala" from 2010 for its noodles products and therefore use of similar expression "Magical Masala" by Nestle from 2013 would amount to passing off under the Trademark Act.
Opposing the claim, Nestle contended that ITC cannot claim monopoly over laudatory expressions like "Magic".
Concurring with the submissions on Thursday, Justice Saravanan said "The word Magic was commonly used in the food industry and the terms Magic and Magical were common to the trade. ''Magic'' was laudatory and a laudatory epithet cannot be given monopoly or protection."
The term ''Masala'' signified a mixture of ground spices used in Indian cooking and it could not be appropriated.
Neither the complainant nor defendant could claim monopoly over the expression ''Magic'' or ''Magical'' along with the common word ''Masala'', he added.
This apart, a descriptive term which directly and clearly conveys information about ingredients, qualities and characteristics of the product or services are not protectable at the first instance, but may qualify for protection if it has assumed a secondary meaning and identifies as a particular product or as being from a particular source, the judge said.
The court noted that a suggestive term used as a mark which indirectly suggests qualities and characteristics of a product may be registrable and protected.
However, words may become distinctive on account of their long and uninterrupted use, as a result of which they may get a secondary meaning and the consumer might begin to associate them with the goods of such proprietors.
"In the case on hand, ITC has approached the court at the earliest occasion, which cannot be entertained," the judge said.