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The Perspective of Using Laudatory Expressions in Trademarks

Introduction

Use of laudatory words to promote products not a misnomer in advertising. The laudatory words and expressions are sublime in product packaging., Due to the importance these expressions carry in advertising and trademark arena, they have gained a centripetal position. ‘Laudatory expression’ are words or terms that describe or give an impression of the quality of the product. Many companies seek to protect laudatory expressions under Intellectual Property by applying for trademark registration. On the usage of the expression or terms that are laudatory by a rival or competitor, an injunction is generally sought as a remedy under the Trademark Act. The point of consideration rests on the proposition of whether laudatory terms are eligible for trademark registration or not. Laudatory terms or expressions are not ex facie qualified for trademark registration and they have to follow the de jure process.


The expressions or descriptions of goods and services that are laudatory might be eligible for trademark protection. Nevertheless, it is pertinent that the elements of a trademark need to reside in the laudatory term or expression. Therefore, laudatory terms or expressions must not be devoid of distinctiveness and required for it to be eligible for registration under the Trade Mark Act.


The expressions or descriptions of goods and services that are laudatory might be eligible for trademark protection. Nevertheless, it is pertinent that the elements of a trademark need to reside in the laudatory term or expression. Therefore, laudatory terms or expressions must not be devoid of distinctiveness and required for it to be eligible for registration under the Trade Mark Act.


Companies urge to get laudatory terms or expressions registered because it gives inter alia the right to exclusive use. Besides this, laudatory terms or expressions can grab the eye of a customer, more so they act as a stimulus for preference or identification of the products.


Case Study -


ITC India ltd .v. Nestle India ltd

In this case, Nestle India contested that laudatory terms like “Magic” used by ITC cannot be qualified for monopoly. According to ITC, it had been using the expression “Magic Masala for its instant noodle brand Sunfeast Yipee since 2010. Concomitantly, the similar expression “Magical Masala” has been used by Nestle Maggi from 2013. Therefore, based on the aforementioned facts and evoking trademark act ITC filed a claim passing off.


The Hon'ble High Court of Madras denied the monopoly or protection to the laudatory word “Magic” and the term “Masala” because the latter is analogous to the concoction of ground spices widely used in Indian cooking. Additionally, Magical and Magic are words, commonly used in the said trade, even the expression Magic is common to the food industry. The terms “Magic” or “Magical” or “Masala” could not be monopolies by either of the parties (ITC or Nestle India).


It was also noted by the Hon'ble Court that words that acquire distinctiveness may get the secondary meaning that might be associated with the consumer to the product.

Nonetheless, the essentials that a trademark ought to possess distinctiveness is of mammoth importance. For laudatory terms or expressions or any other word or mark to be registered as a trademark, it must have the essential features of a trademark, namely- ' It must be a mark, capable of being represented graphically and distinctive'.


Conclusion

The distinctiveness of a trademark may be inherited or acquired by the laudatory terms or expressions used by companies in advertising, which is an essential element in a trademark. There would be a good case if the laudatory terms or expressions have the essential feature and are not barred by Section 9 of the Trade Marks Act, 1999.

However, the matter is decided based on the facts and details of each case, in harmony with the rule of law prevailing in trademark law.

ABOUT THE AUTHOR

Anchal Mittal is a Research Scholar from Delhi University.

Edited by: Swathi Ashok Nair

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