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Judgment
S. Usha, Technical Member
Application for Removal of the Trade-Mark MAGGI from the Register/Rectification of the register under Section 57 of the Trade Marks, Act, 1999
(hereinafter referred to as the Act). The trade mark MAGGI is registered under Trade No. 546574B in Class 8.
The applicant, a Swiss company incorporated under the laws of Switzerland, belongs to the Nestle Group of Companies. The applicant company
was founded in the year 1866 which is the largest food and beverage company in the world. The applicant is engaged in the business of manufacture
and sale of an extensive range of food and allied products including milk, cereals, dietetic products, beverages including instant coffee, culinary
products including pasta, noodles, sauce, soups, frozen products, chocolate, confectioneries, biscuits and pharmaceuticals. The applicants products are
marketed under various internationally famous brands such as NESTLE, MAGGI; KIT KAT, MILKMAID, NESCAFE, LACTOGEN. POLO,
MILO etc.
The applicant has been continuously involved in dedicated research and development, primarily aimed at improving the quality of existing products
launching new products and marketing them in new markets. The applicant has produced, the first commercially sold infant formula; the first
condensed milk; the first milk chocolate; the first soluble coffee; the first freeze-dried coffee; and the first granulated instant coffee. The ""Nestle
Group"" has emerged as one of the world's leaders in the food industry and has ranked amongst top companies in the ""Fortune: 500"" magazines.
The trade mark MAGGI which is one of the internationally famous trade marks of the applicant was first adopted and used by the predecessors in
their business in the year 1883. The trade mark MAGGI is used in respect of following groups of products by the applicant:
(a) Dehydrated products (ready to use soups, sauces, seasonings, pasts readymade dishes)
(b) Sterilized/aseptically filed products (soups, sauces, readymade dishes.
(c) Meal accompaniments (mayonnaise, ketchup, dressings, mustards etc).
The trade mark MAGGI was derived from the surname of Julius Maggie founder of the business of the Nestle Group carried out from 1886 up to
1947 under the name of Maggie Alimantana S.A., which merged with the applicant in 1947 and became Nestle Alimantana S.A. The trade mark
MAGGI has the trappings of a coined or invented word, therefore, enjoying highest degree of inherent distinctiveness. The trade mark MAGGI
connotes and denotes the goods and business of the applicant exclusively. In view of the highly distinctive nature of the trade mark MAGGI and its
association with business of the applicants the members of the trade and public at large, any unauthorized commercial use thereof in relation to any
goods or business, are likely to be associated and attributed to the business connected with the applicants and the ""Nestle Group"".
The founder of the Maggi Company, Julius Maggi, developed in 1886 the first instant soup product in the quest for nutritious foods which were both
easy to prepare and affordable. Mr. Maggi also developed the now internationally renowned ""MAGGI WURZE"" a spicy sauce which can pep up
even the most tasteless of soups.
The trade mark MAGGI is extensively used in Germany in respect of various food products and has been in continuous use and has been
extensively advertised in Germany since the year 1887. The products of the applicant bearing the trade mark MAGGI manufactured in Germany have
been exported to various other countries like France, Austria, Switzerland etc.
The impugned trade mark MAGGI is extensively used in Philippines in respect of various food products by Nestle Philippines, Inc., an Associate
Company of the Applicant since the year 1930. The said trade mark has also been used and sold in various European countries and South East Asian
countries for several decades.
The Petitioner has expended substantial amounts on advertisement and promotion of the trade mark MAGGI in India through various media. On
account of such extensive advertisements and sales promotion campaigns, the Petitioners well-known and famous trade mark MAGGI has built a
formidable goodwill and reputation among the public and thus the trade mark MAGGI has come to be identified and associated by the purchasing
public with the applicant's products and business and none else.
The Petitioner has statutory rights in the trade mark MAGGI having secured registration in various parts of the world since the year 1916. The said
goods under the trade mark MAGGI has been manufactured and sold in India since the year 1974 under a license from the Petitioner. The audited
sales of the Petitioner's licensee in India for the goods under the trade mark MAGGI runs to several crores of rupees. The trade mark is registered in
favour of the Petitioner in India in Class 29 and 30 since the year 1968 and the same has been duly renewed and is valid and subsisting. By virtue of
its long, continuous extensive usage and by the advertisement and sales promotion campaigns. The public associate the trade mark MAGGI with that
of the Petitioners and with none else.
The purchasing public are well familiarized with the trade mark MAGGI, as one standing for high quality goods of the applicants' manufacture and
sale and, therefore, falsely believe that the goods of the Respondent No. 1, also originate from the Petitioner and that the business of the Respondents
is in some manner approved by or associated with or has some endorsement from the applicant. Such misunderstanding in the consumers' mind would
lead to dilution of the trade mark MAGGI that had consistently emitted a focused signal indicating the source of high quality and satisfaction-
guaranteed good products. The use of the famous and well known trade mark by the Respondent is likely to cause dilution of the exclusivity in the
applicant's distinctive trade mark and the capability of the marks as being solely associated with the goods and the business of the applicant would
stand diminished.
The applicant has also taken necessary steps to maintain the exclusivity of the mark by preventing any third party from misusing the same. It is
further emphasized that the well known mark MAGGI in the market in the eyes of the consumer, the adoption of the same by the Respondent will be
considered as a brand extension by the consumer of average intelligence and imperfect recollection, which will result in dilution of goodwill and
reputation enjoyed in a well known and famous trade mark MAGGI, registered in favour of the applicant. The use of the impugned trade mark which
is identical by the Respondent is likely to cause confusion and deception leading to passing off.
The trade mark registered under registration No. 546574B in class 8 may be cancelled and removed from the register of Trade Marks being
wrongly entered in the register and remaining without sufficient cause on the following grounds:
(a) The impugned registration obtained by the Respondent is identical to the prior registered trade mark MAGGI of the applicant. The adoption of an
identical trade mark by the Respondent is likely to cause confusion and deception among the consumers. The adoption, use and registration of an
identical trade mark MAGGI by the Respondent is a step towards misrepresentation and amounts to misappropriation of the Petitioner's goodwill and
reputation. Consequently, the registration is in violation of the provisions of Section 9(2)(a) and Section 11(1) of the Trade Marks Act, 1999.
(b) The adoption and use of an identical trade mark by the Respondent in relation to goods which can be considered as cognate and allied in nature is
bound to cause confusion as the applicant's trade mark is a well know and famous trade mark in India and the impugned registration therefore is liable
to be rectified being in violation of the provisions of Section 11(2) of the Act.
(c) The trade mark MAGGI on account of its prior adoption and use by the applicant since 1974 has become distinctive of the applicant's goods and
thus the public associate the trade mark MAGGI with the applicant's alone and none else. The use, if any, by the Respondent is likely to cause
confusion and deception and ought to be removed being in violation of Section 11(3) of the Act.
(d) The Respondents have no justification for adoption of an identical trade mark as that of the applicant's trade mark MAGGI in relation to goods
which can be considered as similar in nature because of the same trading channels. Evidently, the Respondents are trying to take unfair advantage of
the goodwill and reputation enjoyed by the applicants. The impugned registration is therefore liable to be rejected under Section 11(1) of the Act.
(e) The Respondent being a pirator having dishonestly adopted the applicant's well-known trade mark MAGGI only to earn illegal profits and cannot
claim to be the proprietors of the trade mark under Section 18 of the Act and is liable to be removed and rectified.
(f) The adoption and use of the impugned trade mark by the Respondent is dishonest, fraudulent and solely motivated to encash upon and
misappropriate the goodwill attached to the trade mark of the applicant and, therefore, is liable to be rectified under Section 57 of the Act.
The applicant therefore prayed that the registration be removed from the register for the following reasons stated above.
Notice sent to the 1st and 2nd Respondents were returned unserved and this Appellate Board had directed the applicants to serve the notice on
the Respondents by substituted service. Inspite of notice by way of substituted service, the Respondent did not appear and the matter was heard ex-
parte.
We have heard learned Counsel for the applicant Mr. Hemant Singh. The learned Counsel for the applicant submitted that the impugned trade
mark MAGG1 is a well know mark which was adopted and used as early as 1883 and in India since the year 1974. The learned Counsel also pointed
out that the definition of the well known mark as per the provisions of the Section 2(1)(zg). The learned Counsel also submitted that the mark ought to
be removed from the register as per the provisions of Sections 11(6) to (9) of the Act as they were the relative grounds for the refusal of the
registration. The learned Counsel also submitted that they had stated in para 6 of the application and in the statement of case as to how they derived
the trade mark MAGGI. The trade mark MAGGI was derived from the surname of Julius Maggie, founder of the business of the Nestle Group of
Companies.
The learned Counsel also drew our attention to the places where the trade mark MAGGI is being sold and pointed out that the goods bearing the
trade mark MAGGI were sold all over the world and thus the trade mark became globally well know. He also submitted that the trade mark MAGGI
was also registered in all parts of the world. The counsel also drew our attention to sales figures mentioned in the application and also submitted that
the sales figures were supported by annual reports to prove the same. The counsel also drew our attention to protection lists and the registration
certificates filed as Annexures to the application and he also pointed out the registration certificates which were registered in India as early as 1968.
The Counsel also brought to our notice the various advertisement cuttings and the periodicals to prove their sale promotion. A copy of the book
Worlds Greatest Brands"" by ""Inter Brands"" (1996 edition) was brought to our notice to show that the trade mark MAGGI was among the worlds top
50 brands and also to prove their trade mark was well known trade mark.
The Counsel had filed a search report at page 569 of the typed set of the papers to show that only from the search report; the applicant became
aware of the Respondent's registration and immediately had taken steps to file the instant rectification application.
The applicants also submitted that they were prior in use and adoption and that their rights are to be protected. The use of the identical mark by
the Respondent would definitely cause confusion and deception among the public and thus be an hindrance to their sales and thus were aggrieved
persons and have filed the instant rectification application. The impugned registration was in violation of the provisions of Section 11(2) and (3) of the
Act. The trade mark MAGGI has no meaning and the same was adopted from their founders name. The Counsel referred to various judgments to say
that even though the Respondent had adopted the trade mark in different class of goods, the applicants would be at a loss if the Respondent was
allowed to continue using the impugned trade mark as the applicants trade mark was a well known trade mark. The public at large would definitely be
misled and they would be led to think that the Respondent goods emanate from the applicants and, therefore, prayed that the rectification application
be allowed and the mark to be removed from the register.
We have carefully considered the arguments of the learned Counsel for the applicants and have gone through the documents and pleadings filed
by the applicants.
First, we shall deal with the issues as to whether the applicant is a person aggrieved. In this regard, we quote a passage from the Trade and
Merchandise Marks Act by Shri P. Narayanan - 4th Edition at page 355, para 21. 19 would be instinctive.
19 Persons where interests are affected - An application for rectification can only be made by a person aggrieved. The expression ""person
aggrieved' has been liberally construed by English Courts while dealing with the corresponding provisions under the English Acts. Thus, person who
are aggrieved person who are in some way or the other substantially interest in having the mark removal from the register, or persons who would be
substantially damaged if the mark removed. Whenever it can be shown that the applicant is in the same trade as the person who has registered the
trade mark and whenever the trade mark, if remaining on the register, would or might limit the legal rights of the applicant, so that by reason of
existence of the entry or the register, he could met lawfully do, has a locus standi to be heard as a person aggrieved. Any trader is in the sense of the
statute, ""aggrieved whenever the registration of a particular trade marks operates in restraint if what would otherwise has been his legal rights"".
The phrase ""aggrieved person"" has a different meaning for the purpose of removal on the ground of non use under Section 47 of the Act and a
different meaning under Section 57 on the ground of wrongly remaining on the register as held in Handi Trade Limited and Anr. v. Addison Paints and
Chemicals Ltd., AIR 2003 SC 3377 : 2003 (27) PTC 241).
In the grounds of removal of the registration, the applicant has stated that the registration is in contravention of the provision of Sections 9, 11 and
18 of the Act and thus the mark is wrongly remaining on the register. The trade mark MAGGI has no meaning and thus has trappings of an invented
word. The applicants MAGGI have been sold all over the world and thus has obtained the status of the well known mark. The use of the impugned
mark by the Respondents in Class 8 is likely to cause confusion and deception among the public. Hence, the applicant is a person aggrieved and has a
locus standi to maintain this application for rectification.
The next issue is the question of likelihood of confusion or deception among the consumers and the resulting damages. Even though the rival goods
are entirely different, the marks being identical possibility of confusion is not likely but certain. This issue has been well settled by the various decisions
of the Apex Court and the High Court.
In Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bom 24, a Division Bench of Bombay High Court while dealing with the
question whether there was an tangible danger of confusion between Caltex itches and Caltex petrol and various other oil products of the opponents,
observed that although the goods were totally different and there was no trade connection between them still there was a likelihood of deception or
confusion.
The Court observed:
On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark ""Caltex"" in connection
with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they
were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are
most likely to assume, that they originated from the proprietor of the mark, namely, the opponents
In Bata India Ltd. v. M/s. Pyare Lal and Co. Meerut City and Ors., AIR 1985 All 242 : PTC (Suppl)(1) 116(All), the Allahabad High Court was
dealing with a situation where the Plaintiff was manufacturing shoes, while the Defendant was producing goods lie foam and analogous products.
Rejecting the materials in the market, the Court observed:
This argument loses sight of an important feature viz, how would a lay customer know in the first place that the Plaintiff was not producing foam or
foam material? How would the customers know that Bata were not producing foam? It is well known that the name represented makers of shoes and
analogous products, but a question would also arise in the mind of the lay customers whether Bata were also producingibam. Who is going to answer
this question? Does an ordinary customer ask the seller as to whose product it is? The answer generally is in the negative. He buys a thing on the
basis of his own impression.
Merely because the Plaintiff in case is not producing foam is not enough to hold that there can be no passing off action in respect of the user of the
name 'Bata' to the products marketed by the Defendants. The user of the name or mark 'Bata' by the Defendants is indicative of their intent. It
appears that they desire to market their foam with a view to gain some advantage in a competitive market. As seen earlier, there is no plausible
explanation as to why the name 'Bata' was being used by them. A passing off action would lie even if the Defendants were not manufacturing or
producing any goods similar to that of the Plaintiff. A passing off action would; lie where a misrepresentation is likely to be caused or a wrong
impression created, as if the product was of some one else.
In Daimler Benz Aktiegesellschft and Anr. v. Hybo Hindustan, AIR 1994 Del 239 : 1994 (14) PTC 287 (Del), a single Judge of this Court while
issuing an injunction against the Defendant from using the word 'Benz' with reference to any underwear manufactured by them in the face of the
same being used by the Plaintiffs therein for their cars, observed as follows:
I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the ""Mercedes Benz"" its symbol, a
three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the
Defendant, or any one else. Such a mark is not up for grabs - not available to any person to apply upon anything or goods. That name which is well
known in India and world wide, with respect to cars, as is its symbol a three pointed star.
In Kiriloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149 : 1997 (17) PTC 469 (Bom), Bombay High Court while
dealing with a similar contention as is raised in the present case observed as follows:
The expression 'common field of activity' was coined by Wynne Parry J. in McCulloch v. Levis A. May (Product Distributors) Ltd. Popularly
known as 'Uncle Mac' case reported in 65 RPC 58 in which he held that its presence or absence was conclusive in determining whether or not there
was passing off. Manning J. in the case of Henderson v. Radio Corporation Pty., (1969) RPC 218, holding that it would be unsafe to adopt the view
expressed in Mc Culloch v. Mary that what has been called a common field of activity must be established in every case to entitle the Plaintiff to
succeed. He further held that it is going too far to say that the absence of this so-called common field of activity necessarily bars a Plaintiff from
relief. With the passage of time, law on requirement of common field of activity in a passing off action has radically changed. There is no requirement
for a common field of activity to found a claim in passing off. In Marage Sudies v. Counter Feat Clothing Co. Ltd., (1991) FSR 145, Browne Wilkison
V-C said that the so-called requirement of the law that there should be a common field of activity is now discredited. The real question in each case is
whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the Plaintiff. The
focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be
confused.
The Bombay High Court after observing that with the passage of time and reputation acquired, the trade mark 'Kirloskar' has acquired the
secondary meaning and has become almost the household word laid down the following proposition in para 14 of the judgment:
In the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a
passing off can successfully lie if the Defendant has adopted identical or similar trading name and even when the Defendant does not carry on similar
activity. Even if the Defendant's activities in such circumstances, are remote, the same are likely to be presumed a possible extension of Plaintiffs
business or activities.
In Mahendra and Mahendra Paper Mills Ltd. v. Mahindra Mahindra Ltd., 2002 (2) SCC 147 : 2002 (24) PTC 121 (SC), the Apex Court after
extensively quoting with approval from the above judgments summed up the principles applicable in deciding an application for interim injunction as
follows:
Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus: that whether there is a likelihood of
deception or confusion arising is a matter for decision by the Court, and no witness is entitled to say whether the mark is likely to deceive or to cause
confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination that broadly speaking a factors
creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the
existence of any connection in course of trade, and others.
Based on the above observations, the Division Bench of the Delhi High Court, reported in 2008 (36) PTC 223 Delhi DB - Larson and Turbo Zintal
v. Lachmi Narain Trades and Ors., has held that the dissimilarity in some of the products in which the parties trade does not make any material
difference insofar as the grant or refusal of injunction against the Defendants in the facts and circumstances of the case are concerned.
The goods are totally different and there is no trade connection in the case on hand. In light of the above observation, we are of the opinion that if
the mark is allowed to remain on the register, it is likely to cause deception and confusion.
The relevant factors for determining a mark as a well known mark by the g relevant sector of the public is the duration, extent and geographical
area of any use of a mark. The purpose of the Act is not only to protect the proprietor of the trade mark but also the public at large who would be the
victim of deception and confusion. The impugned trade mark MAGGI of the applicants has acquired wide reputation among the public at large by
sales and advertisements. Hence, the mark of the Respondent on the register is likely to cause confusion among the public.
The other issue is the right to claim the proprietorship of the trade mark as per the provisions of Section 18(1) of the Act. When the rival marks
are identical, the right of the earlier user is to be protected. Here in the instant case on perusal on the applicants documents it is clear that the
applicants mark has been in market since 1893 outside India and in India since 1962. As the Respondents have remained ex-parte, we did not have the
benefit of hearing them and looking into the records, but from the search report filed by the applicants, it is shown that the application for registration
by the Respondent has been made in 1994. We therefore are of the view that the applicants are prior users and are the proprietors of the trade mark
MAGGI. Similar approach was taken in the case of Balaji Chettiar v. Hindustan Lever, AIR 1967 Mad 148 - where it was held that the person who
first designed or who used a trade mark first is the person entitled to claim the proprietorship thereof unless subsequently he has dealt with the same
and some other has obtained rights thereto in the manner known to and recognized by law.
We therefore are of the opinion, with the above observations that the trade mark MAGGI under Application No. 546574B in class 8 has to be
rectified and removed from the register. Consequently the application for rectification is allowed. The Registrar of Trade Mark is directed to remove
the trade mark under No 546574B in class 8 from the Registrar of Trade Mark. No order as to costs.