ITC Limited v. Nestle India Limited

Relevant Acts and provisions

Trade Marks Act, 1999

Section 30(2)(a)Section 9(1)(b)Section 9(1)(c)

Provisions considered: Sections 9(1)(b), 9(1)(c) and 30(2)(a) of the Trade Marks Act, 1999.

Brief facts

ITC, manufacturer of a brand of instant noodles, sued Nestle India for using a two-word expression on its own noodles packaging, alleging that ITC had coined and popularised the phrase in relation to its noodles and that Nestle's use amounted to passing off and unfair competition. Nestle contended that both words were common, laudatory and descriptive words used across the food industry to denote flavour, incapable of exclusive appropriation, and that it had independently adopted the expression.

Issues before the Court

1. Is the expression a common, laudatory or descriptive term incapable of trade mark protection under Section 9?
2. Has the plaintiff established the goodwill and reputation necessary to succeed in an action for passing off?

Court's findings

The Court held that both words in the expression are common and laudatory words frequently used in the Indian food and spice industry to describe flavour and taste, and that no trader could claim exclusive rights over such common vocabulary merely by combining the two words.

The Court found that the expression was descriptive of the flavour of the product rather than functioning as a source identifier for the plaintiff's noodles.

The Court further held that the plaintiff had not established the goodwill, reputation and consequent likelihood of deception necessary to succeed in a passing off action, since numerous other traders in the food industry used similar expressions and there was no evidence that consumers associated the phrase exclusively with the plaintiff's product.

Decision

Suit dismissed; the defendant's use of the expression was held not to amount to trade mark infringement or passing off.

Cases cited

• Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Descriptive Marks Generic Marks Goodwill Passing Off Secondary Meaning