The Intellectual Property Appellate Board (IPAB) has ruled that Swiss major Nestle is the sole proprietor of the ?Maggi? trademark in India. Though Nestle has been holding the mark primarily for culinary products such as noodles, sauces and soups, IPAB observed that granting the same mark to any other prdouct of a different company will cause confusion and deception.
Setting aside the Trade Mark Registry 2009 order that was in favour of Mumbai-based Swaraj Industrial and Domestic Appliances to register the Maggi trademark for a slew of products, ranging from kitchen appliances to electric gadgets, IPAB said Nestle has established its business under the trademark, Maggi, especially in the noodles and sauce segment, in India and abroad. The mutinational company’s goods bearing the trademark Maggi have thus acquired plenty of reputation and goodwill.
Swaraj Industrial and Domestic Appliances? adoption of the Maggi brand name in such circumstances cannot be said to be honest and it is only to trade upon the goodwill and reputation of the appellants, said an IPAB bench comprising S Usha, vice-chairman and V Ravi, technincal member.
The IPAB order was in response to an appeal filed by Societe Des Produits Nestle, SA before the appellate board in Chennai questioning the Trademark Registry, Mumbai?s order granting permission to Swaraj Industrial and Domestic Appliances for registration of the Maggi mark for its products including kitchen appliances, electric fans, heater, geysers and bulbs etc. Swaraj Industrial and Domestic Appliances had claimed that these marks had been in use since January 1984 and 1992. They had argued that though the marks are identical, the products are different and, hence, there was no room for confusion among customers.
“Even if we consider the fact that the goods are different, as argued by the respondent (but we do not accept this view), once it is decided that the appellants? goods bearing the trademark have acquired goodwill and reputation, the public associates those goods only with the appellants. Even though the goods are different, the possibility of confusion is certain as the marks are identical. Nestle, which is a large company with more sources, can expand its field of business. The impugned order is set aside and the appeals are allowed. There shall be costs of R40,000,” IPAB said.
Observing that Nestle’s goods under the trademark Maggi are food items and snacks that are being purchased by the common man, the household goods of Swaraj Industrial and Domestic Appliances would make the common man think that the goods emanate from Nestle. ” This will lead the common man to associate the household goods under the trademark Maggi with the Nestle Group. Therefore, we are of the opinion that if the application for registration is allowed, it is likely to cause confusion and deception,” the IPAB said. Elaborating on the issue, IPAB said that permitting Swaraj Industrial to carry on the business under the trademark, Maggi would be approving their dishonest and wilful conduct. This would also amount to encouraging them to commit fraud.
Vanita Gabriel, constituted attorney of Societe Des Produits Nestle SA, had said that the trademark Maggi was adopted in the year 1883 by Julius Maggi. The word Maggi formed part of their corporate name as ?The Maggi Company? (Maggi Alimentane SA). The Maggi products were sold in Switzerland as early as 1886, in France, Austria and Germany since 1887, in southeast Asian countries since 1936, in Singapore since 1939 and in Malaysia since 1960. The trademark Maggi features in ?World?s Greatest Brands? (1996 Edition), published by ?Inter Brands?, which ranked Maggi among the world?s top 50 brands. Nestle has been selling Maggi products in India since 1974 and is the registered proprietor of the Maggi trademark.
Coming down heavily on Trade Mark Registry, Mumbai, which gave consent to Swaraj Industrial to proceed with registration, IPAB said, ?We do not accept the finding of Trade Mark Registry that Nestle has not proved the use of the mark Maggi since 1970?.
Significanlty, questioning the legality of the order, IPAB said that the impugned order has been passed by the senior examiner of Trade Marks. ?We are unable to understand as to under what authority did the senior examiner hear and decide the matter. As per Section 3 of the Act, the registrar is the controller general of patents, designs and trademarks appointed by the central government. Section 3 read with Section 91(1) of the Act makes it clear that any order or decision passed by the registrar is appealable. Considering this, we are of the view that the order passed by the examiner without any authority cannot be said to be lawful. We are therefore of the opinion that the order passed by the senior examiner is not valid”, IPAB said.