By Sachika Vij
Published On: November 15, 2021 14:59 IST
Trademarks are vital to create a new, distinct meaning for an existing word and may improve a brand’s reputation and influence customer choices. They are basically used as new phrase to avoid client misunderstanding on the market and to differentiate the origin of the items and services. Recently, a tussle over trademark and copyright infringement was seen between ITC Yippee Magic Masala Noodles and CG Foods Wai Wai Noodles.
ITC had filed the claim against CG Foods Pvt Ltd (CGF), producers of noodles under the label ‘Wai Wai,’ before the Additional City Civil and Sessions Judge, Commercial Court, Bengaluru, for passing off and copyright infringement. However, the same appeal was dismissed by the Division Bench of Aravind Kumar and Pradeep Kumar Yerur and also established guidelines for courts to follow when dealing with injunction applications in a pending litigation seeking relief against passing off.
Thus, the court held “that order of learned trial Judge dismissing the applications filed by the plaintiff for grant of temporary injunction deserves to be affirmed.”
The Tussle between Sunfeast Noodles and Wai Wai
ITC claimed that CGF duplicated the attractive appearance of the Sunfeast Yippee Noodles package. ITC wanted to stop CGF from utilising Wai Wai labeled noodles that are marketed in the package.
ITC based their claim on the full visual appearance of their Sunfeast Yippee Magic Masala Noodles package’s orange, red colour scheme. Since 2010, ITC has been using the packaging, according to the company. It has spent a lot of money on marketing and advertising its packaging and brand.
As a result, it is well-known in the trade and the general public. CGF’s employment of a similar get-up for its Wai Wai branded white noodles amounts to passing off and copyright infringement, and it harms its reputation that it has created.
CGF defended the case, claiming that it is a significant participant in the FMCG and packaged foods segments and is engaged in producing, distributing, and exporting food goods.
The plaintiff’s ‘brand names’ are actually different after deleting the descriptive marks and trademarks common to competing wrappers, according to CGF, and because the brand names are totally independent, there is no danger of confusion. If the plaintiff claims that the colour scheme has been copied to such an extent that it may cause confusion, the plaintiff must show that the ‘orange-red’ colour scheme has acquired such a high level of distinctiveness in the market that the average buyer would ignore all other features and rely solely on the colour scheme to identify the plaintiff’s products.
Legal Instruments Involved In The Tussle
- Trademark ‘Distinctiveness’
Every trademark distinguishes the items sold under it as coming from a certain source. It becomes stronger with time, and a specific trademark is registered or psychologically connected in the minds of customers as unique of the product and its source. Some trademarks are different from the start owing to their inherent characteristics, and they are legally protected as soon as they are used as a trademark, whilst other marks get protection due to a secondary meaning that develops through time. To qualify as a trademark, a non-inherently unique mark must have that level of strength or secondary meaning.
Even a cursory examination of the Magic Masala brand’s wrapper reveals that ‘Yippee’ written in yellow colour and relatively large font (in both 12 Rs and 48 Rs packs) stands out in contrast to the ‘Sunfeast’ logo written in red font against a red background; and Magic Masala written in dark blue colour in a much smaller font size against an orange background. The colour ‘yellow,’ which is both brilliant and bright, along with the fact that Yippee has a stylized script and a wide font, appears to impact the sensory organs rather readily just on first glance.
The issues of uniqueness and misrepresentation are not mutually exclusive, but rather significantly interrelated and always capable of interacting with one another.
As far as ‘distinctiveness’ in this case is concerned, the Karnataka High Court observed that the brand ‘Sunfeast Yippee’ and, to a lesser extent, the sub-brand that indicates the various flavours – in this case, ‘Magic Masala’ – would be relied on by the relevant public to associate the goods as those of the plaintiff, to identify the goods as those of the plaintiff, or to distinguish the goods of the plaintiff from others[i].
- Passing Off
The trademark provides protection for registered products and services, whereas the passing off action protects unregistered goods and services. Unregistered trademark rights can be enforced by passing off. Reputation, misrepresentation, and goodwill damage are the three main parts of passing off. The most significant fact is that the remedy is the same in both circumstances, but trademarks are only accessible to registered products and services, whereas passing off is open to unregistered goods and services.
In the present case, the act of passing off would apply as soon as the defendant proves that plaintiff’s mark which the average buyer is most likely to associate or utilise to identify plaintiff’s goods.
- ITC Limited Vs Nestle India Limited[ii]
The Madras High Court in this particular case held that such similar phrases like ‘Magic Masala’ and ‘Magical Masala’ can be used and can’t be monopolized as the same would not amount to passing off. With relation to its noodles brand “Sunfeast Yippiee!” established in 2010, ITC had claimed that it has exclusive rights to use the term “Magic Masala.” Nestle argued that ITC does not have a monopoly on laudatory term like ‘Magic’.
Finally, it should be noted that normally descriptive words or phrases cannot be registered as trademarks.
A suggestive word employed as a mark that implicitly conveys traits and attributes of a product may be registrable and protected, according to the court. Words, on the other hand, may become distinctive as a consequence of their lengthy and uninterrupted usage, resulting in a secondary meaning and the consumer associating them with the goods of such proprietors.
- Cadila Health care Ltd. Vs Cadila Pharmaceuticals[iii]
The Hon’ble Supreme Court in the present case concluded that there was a probability of passing off and that it was a matter of deceptive likeness after examining the requirements of the Trademarks Act, 1999 and Section 17-B of the Drugs and Cosmetics Act, 1940. In this situation, some of the most important criteria to examine while evaluating false similarity were:
- The characteristics of markings
- The degree of resemblance between competing marks, both phonetically and visually
- Nature of goods
- The location where the items are utilized.
- The commodities’ resemblance in terms of efficacy, performance, and nature.
- The target consumers of the goods, their intelligence and the requisite degree of care that needs to be taken.
In the case, the companies produced identical drugs, the Appellant (Cadila Health care Ltd.) obtained approval to commercialise the medicine across India in 1996 under the brand name “Falcigo” to treat cerebral malaria from Drugs Controller of India. The Respondent (Cadila Pharmaceuticals) was also given licence to commercialise medications for cerebral malaria under the name ‘Falcitab’ in 1997.
- FAGE UK Ltd. Vs Chobani UK Ltd.[iv]
In this case, the judgement addresses the law of prolonged passing off and specifies the protection that traders who rely on an industry labelling convention to maintain the goodwill in their trade names would get. It’s noteworthy to note that when determining whether a word or phrase identifies a certain class of commodities, what matters is what the relevant sector of the public thinks, rather than what the total, or even a majority, thinks.The judge found that a significant number of individuals who bought Greek yoghurt in the UK did so because it was manufactured in Greece, and that was what important to them, which has been consistently noted by yoghurt makers in the UK market for over 25 years, and so the firm had special goodwill.
It was concluded that the introduction of Chobani’s yoghurt to the market would clearly harm the distinctiveness of the phrase “Greek yoghurt,” because once a consumer learned that the Chobani yoghurt was made in the United States, no one reading the phrase “Greek yoghurt” on yoghurt pots in the future could safely assume, without checking the small print, that the product had been made in Greece.
- Sunil Mittal & Anr. Vs Darzi on Call[v]
The plaintiff was the owner of registered label marks including the term “Darzi,” which he was utilising to provide tailoring services. The defendants, on the other hand, were also providing tailoring services under the mark “Darzi on call.” They maintained that the term was generic and that the plaintiffs had no right to claim exclusivity over any component of the label mark.
DARZI is an important aspect of both marks, since it is the recall value of the mark, and so there is a risk of confusion between the trademarks.
The Court highlighted that a trademark/trade name provides protection for a unique idea, concept, or notion. If no one has ever thought of using a term as a trademark that has previously been used to describe services, then the individual who has come up with this original thinking/idea deserves to be protected. Furthermore, because the Defendant requested for registration of its label, it is barred from claiming that the term DARZI is generic.
Thus, we can conclude that even if a mark is naturally distinctive or evidence suggests it has gained distinctiveness, trademark owners must protect such distinction in order to retain the mark’s strength. As far as passing off is concerned, the same application applies to unregistered goods and services, and that the remedy for violation of suit and passing off will be the same in both situations.
In regard to the conflict between Yippee Sunfest and Wai Wai Noodles, the court laid down that while ruling on copyright infringement, the defendant’s work does not have to be an identical replica of the plaintiff’s work. The most important thing to look for is a replica of a significant portion of the plaintiff’s work. It was also noted that if the plaintiff cannot establish that major aspects of the plaintiff’s outfit have been replicated in the defendant’s outfit, then proving resemblance or identity in other non-essential features will be irrelevant.
ABOUT THE AUTHOR
This article is written by Sachika Vij , a student, studying at Dr. Ram Manohar Lohiya National Law University, Lucknow. The Author is in her first year and has recently started her law school journey. She owns a keen interest in understanding and penning down her opinions and has a special interest in getting adept at writing and blogging.
Edited by: Aashima Kakkar, Associate Editor, Law Insider
- World Intellectual Property Organization (1997). Introduction to Intellectual Property: Theory and Practice. Kluwer Law International. p. 23.
- The History and Development of Trademark Law (PDF)
- “Trade marks identify the goods and services of particular traders. Signs that are suitable for distinguishing products or services of a particular enterprise from that of other companies are eligible for trade mark protection”.
- News, E., 2021. Nestle’s use of Magic Masala for Maggi fine, ‘no monopoly’ on expression, rules Madras High Court. Indiatvnews.com
- NETWORK, L., 2020. ‘Magic’, ‘Masala’ Common Words In Indian Food Industry; No One Can Monopolise Them: Madras HC In Sunfeast -Maggi Dispute. Livelaw.in.
- Bureau, F., 2021. ITC secures temporary injunction against CG Foods on Wai Wai Majedar Masala noodles. The Financial Express.
- Freeths. 2021. Food fights: trade marks, passing off and copycat packaging – Freeths.
- Fishman, Stephen (2016). Trademark: Legal Care for Your Business & Product Name (11th ed.). Berkeley: Nolo. p. 238
[i] Editor, et al. “Kar HC│ What Is Yipee Magic Masala Noodles And Wai Wai Majedaar Masala Noodles Copyright Infringement Battle All About?” SCC Blog, www.scconline.com, (Last visited on 14 October. 2021)
[ii] ITC Limited Vs Nestle India Limited C.S.No.231 of 2013
[iii] Cadila Health care Ltd. Vs Cadila Pharmaceuticals 2001 (2) PTC 541 SC
[iv] FAGE UK Ltd. v Chobani UK Ltd.  EWCA Civ 5
[v] Sunil Mittal & Anr vs Darzi On Call. CS(Comm) No. 1381/2016