In a recent judgment given by the Madras HC in the case of ITC Ltd. v. Nestle India Limited, the court made it clear that words that are used in general language are incapable of being monopolized. All the big companies, no matter in what field, get a trademark on their brand name and they do it right so as it is the brand name by which the companies get its recognition. The question here is what names can be trademarked and protected and what names cannot. Before getting into that question let us first understand what a trademark is.
The objective of a trademark is to create a trade link between the products or services provided by that trademark’s proprietor. The average customer chooses, by referring to the label associated with them, to pay for certain products or services. The trademark distinguishes the proprietor’s products. They are owners’ intangible properties and are capable of being bought and sold on their own like any other commodity. In fact, even when a situation occurs where the owner of the company is changed and the same product is being offered the customers continue to buy products offered by such new proprietors. Thus, it is a very powerful asset of a trader or service provider. A trademark is always a distinctive mark, it is unique and different from others. A trademark if not distinctive can be refused to get registered under Section 9 of the Trademark Act, 1999.
ITC Ltd. v. Nestle India Ltd. Case
The case was brought before the Madras HC by ITC against Nestle. The dispute arose because the defendant started selling its ‘instant noodles’ by the expression of ‘Magical Masala’ in the year 2013. The plaintiff in the year 2010 has introduced Yippee Noodles in two varieties one of which was ‘Magic Masala’. The contention of the plaintiff was that the Magic Masala became a trademark and attained a secondary meaning in 2010 and by introducing noodles under the expression of Magical Masala the defendant has done ‘passing off‘.
The court held that the word Magic is laudatory and is a very common word in the trade business and therefore no one can claim monopoly over such a word. The court mentioned that traders while selecting a word for their brand should choose words that are unique and should not use words that are descriptive and used in day-to-day language and if they do so they do it at their own risk. The court held that ‘descriptive terms’ which tend to convey information about the ingredients, characteristics, or quality of a product are not protectable. In the present case, Magic Masala and Magical Masala are just two common words which tell about the different flavor of the product sold under their respective brand names and therefore cannot be granted with a monopoly.
However, it does not rule out the possibility of generic words getting the status of a monopoly. If a word is used for a long period of time and remains uninterrupted then it may acquire secondary meaning and any consumer may associate it with the good of such a proprietor. If we take for instance the word Apple, it appears to be a generic word but as soon as one listens to this word, he can associate it with the brand ‘Apple’. So even a generic word, used for a long period of time can be granted a monopoly.
In the case of Aachi Spices and Foods vs. Aachi Cargo Channels Pvt. Ltd, Aachi spices argued that they have the exclusive right to use the mark as they have enjoyed an immense reputation over their trademark. The defendant argued that the mode of business of both plaintiff and defendant are very different and therefore the use of the word Aachi does not hamper the plaintiff’s trade. The court upheld the defendant’s argument and dismissed the injunction. In addition to it, the court held that the word Aachi in Tamil means Grandmother and is a very commonly used word in the entire state. Therefore, a word that is so general in nature cannot be a monopoly of any single entity and therefore be allowed to be used by others dealing in other business.
In the case of Parakh Vanijya Private Limited vs. Baroma Agro Product and Ors., the Calcutta HC held that there is a trademark infringement when the respondent (“Baroma”) used the mark “Malabar Gold” is deceptively similar to their trademark “Malabar” registered under the trademark Act by the petitioner (“Parakh”). After giving this decision the court granted an interim injunction and thereafter the same was challenged by the respondent. The Hon’ble SC upheld the decision of Calcutta HC and stated that registration of Parekh’s trademark mark had a specific disclaimer that the company has no right over exclusive use of the word “Malabar”. Thus, the respondents were allowed to use the trademark “Baroma Malabar” and the court found no similarity between it and Parekh’s “Malabar”.
When a trademark right is lost by the virtue of the term being very common it is called “Trademark Genericide”. Every proprietor wants to enjoy exclusive rights over his brand name as it is the mark of their recognition. There is a lot of money spent by every proprietor in advertising their brand and therefore no one wants to let go of his brand name. Now, if a proprietor wants to avoid such circumstances, he needs to keep some things in mind.
Try to use words that are unique and innovative.
If using generic words, do not use them in a verb or noun form.
Always keep a check on any unauthorized use of a trademark.
Try to promote the brand in such a way that the generic word acquires a secondary meaning.
Therefore, a trademark should be class apart and should stand out as distinctive from others.
Authored by – Swastik Sahai Bisarya, a third-year student pursuing B.A.LLB (Hons.) from Institute of Law Nirma University, Ahmedabad. His areas of interest include IPR, Corporate and Commercial Laws.
Editor’s Note The author in this article with the help of the case of ITC v. Nestlemakes it clear that a monopoly over generic words cannot be granted. The author uses another case to reiterate this concept and finally concludes that if a proprietor wants to avoid such circumstances, he needs to be unique, avoid using generic words, and always keep a check on unauthorized use of the trademark.