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2020 Supreme(Mad) 1395
IN THE HIGH COURT OF JUDICATURE AT MADRAS
T.S. SIVAGNANAM, V. BHAVANI SUBBAROYAN, JJ.
ITC Limited, Rep., by its Constituted Attorney P. Ramkumar - Appellant
Versus
Nestle India Limited, Chennai - Respondent
O.S.A. No. 170 of 2020 & C.M.P. Nos. 8555, 8559, 9158 & 8117 of 2020
Decided On : 10-11-2020
For the Appellant :P.S. Raman, Senior Counsel, Mani Shankar, Senior Counsel, Arun C. Mohan, Advocate.
For the Respondent:Hemanth Singh, Senior Counsel, N.L. Rajha, Senior Counsel assisted by Gladys Daniel, Mamta Jha, Advocates.
Headnote:(A) Trade Marks Act, 1999 - Sections 2(m), 2(zb), 9, 30, 35 - Passing off action - Plaintiff's attempt to protect the mark 'MAGIC MASALA' dismissed on grounds of it being descriptive and common; appellant failed to establish goodwill or distinctiveness for the term. Respondent's use of 'MAGICAL MASALA' found bona fide and non-deceptive. (Paras 1, 10, 102, 107)
(B) Distinctiveness and Goodwill - Prior continuous user establishes rights in descriptive names; prior user must show distinctiveness to claim protection. (Paras 79, 82, 105)
(C) Burden of Proof - Party alleging passing off must demonstrate deception or confusion; evidence must be credible and relevant. (Paras 92-93, 100)
(D) Misrepresentation Standard - Misinterpretation of mark must infringe on goodwill; mere resemblance not sufficient for passing off claim. (Paras 88-100)
| Table of Content |
|---|
| 1. filing of suit and requested reliefs (Para 1 , 2 , 3) |
| 2. claims of market presence and similarities in trademarks (Para 4 , 5 , 6 , 7 , 8) |
| 3. respondent's defense and arguments against claims (Para 9 , 10 , 11 , 12) |
| 4. court's framing of issues for consideration (Para 14 , 15 , 17 , 19) |
| 5. arguments around evidence and market confusion (Para 24 , 34 , 36 , 40) |
| 6. court's analysis of trademarks and distinctiveness (Para 52 , 54 , 56 , 58) |
| 7. legal definitions and implications regarding trademarks (Para 60 , 62 , 65 , 68) |
| 8. final conclusion on passing off and trademark rights (Para 72 , 81 , 83) |
| 9. conclusion drawn on the merits of the appeal (Para 90 , 92 , 94) |
JUDGMENT :
T.S.Sivagnanam, J.
(Prayer: Original Side Appeal filed under Order XXXVI Rule 1 of OS Rules read with Section 15 of LETTERS PATENT against the judgment and decree dated 10.06.2020 made in C.S.No.231 of 2013.)
1. This appeal by the plaintiff is directed against the judgment and decree in C.S.No.231 of 2013, dated 10.06.2020.
2. The appellant/plaintiff, M/s.ITC Limited, filed the suit against the respondent/defendant, M/s.Nestle India Limited, for a judgment and decree
(a) for permanent injunction restraining the respondent/defendant by themselves, their Directors, Principal Officers, successors-in-business, assigns, servants, agents, distributors, retailers, stockists, advertisers or any one claiming through them from in any manner passing off or enabling others to pass off their products, i.e., noodles as and for the plaintiff's noodles by use of the offending mark MAGICAL MASALA or any mark similar to the plaintiff's mark MAGIC MASALA or any other manner whatsoever;
(b) the respondent/defendant be ordered to surrender to the appellant/plaintiff for the purpose of destruction all goods including containers, cartons, packs, labels, prints, blocks, dyes, plates, moulds and other material bearing the mark/name MAGICAL MASALA, which is deceptively similar to appellant/plaintiff's mark MAGIC MASALA;
(c) to pass a preliminary degree in favour of the appellant/plaintiff directing the respondent/defendant to render account of profits made by use of offending mark MAGICAL MASALA and final decree be passed in favour of the appellant/plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts; and
(d) the respondent/defendant be directed to pay to the plaintiff as compensatory and punitive damages a sum of Rs.10,05,000/- for the acts of passing off committed by them.
3. The case of the appellant as could be culled out from the plaint is that they are a well established business house with a history of more than hundred years with diversified presence in various products and business lines. their branded packaged foods business is one of the fastest growing business in India driven by the market standing and consumer franchise of its popular brands viz., AASHIRVAAD, SUNFEAST, BINGO!, KITCHENS OF INDIA, MINT-O, CANDYMAN, YIPPEE etc. It is stated that the appellant entered into branded packaged foods business in the year 2001 with the launch of “Kitchens of India”, ready to eat Indian gourmet dishes. In the year 2003, the appellant entered biscuits segment with the launch of SUNFEAST and, in the year 2007, they entered the fast growing branded snacks category with Bingo! In 2010, they entered Indian instant noodles market with “Sunfeast YIPPEE!”. It is claimed that in just over a decade, the food business of the appellant has grown to a significant size with an inevitable distribution reach, a rapidly growing market share and a solid market standing. It is stated that in 2010, the appellant launched Sunfeast YIPPEE! Indian noodles in two variants – YIPPEE! MAGIC MASALA and CLASSIC MASALA, which have been available in the market since their launch in 2010.
4. The appellant claims that their instant noodles
