Nestlé triumphs in dispute over use of exclamation ‘Yo!’

India
In Nestlé India Limited v Moods Hospitality Private Limited (FAO (OS) 255/2009, February 10 2010), the Delhi High Court has allowed an appeal from a single judge order in a trademark dispute involving the term 'yo!' - an informal expression used the world over to greet other people or get their attention.
 
Mood Hospitality Private Limited (MHPL), which runs a chain of Chinese restaurants in India under the name Yo! China, filed a trademark infringement action against Nestlé India Limited before the Delhi High Court. MHPL sought an interim injunction preventing Nestlé from using the expression 'Yo' for its recently launched Maggi Cuppa Mania instant noodles. The noodles existed in two flavours: Masala Yo! and Chilly Chow Yo!. The single judge ruled in favour of MHPL and restrained Nestlé from using the term 'Yo!'. Nestlé appealed to the division bench of the Delhi High Court. 
 
In its appeal, Nestlé argued that:
  • ‘Yo!’ is a popular expression commonly used by the trade as an expression of "excitement and attention". Thus, ‘Yo!’ was not distinctive and was not a well-known trademark.
  • Nestlé used the term ‘Yo!’ only as a "flavour descriptor". To constitute infringement under the Trademarks Act 1999, the mark must be "used as a trademark". No evidence had been filed by MHPL to show that the term ‘Yo!’ had been used as a trademark.
  • Use of ‘Yo!’ in conjunction with the terms ‘Masala’ and ‘Chilly Chow’, as well as the MAGGI mark, could not cause confusion among consumers. Moreover, since the marks were different, passing off did not arise.
  • Where a mark consists of several elements, its registration confers exclusive rights over use of the mark as a whole. Thus, MHPL’s registration for YO! CHINA in Class 30 of the Nice Classification did not mean that it had exclusive rights over the term ‘Yo!’ alone for goods in Class 30.
MHPL submitted as follows:
  • It had coined and adopted the expression ‘Yo! China’ in 2002. The terms ‘Yo!’ and ‘Yo! China’ had thus become distinctive of MHPL, and it had exclusive rights over use of the marks YO! and YO! CHINA.
  • Generic, common and descriptive words may be protected if they have acquired a secondary meaning. ‘Yo!’ and ‘Yo! China’ had acquired distinctiveness through extensive use.
  • Nestlé had not demonstrated why ‘Yo!’ could be regarded as a flavour descriptor.
  • It was not necessary for the term ‘Yo!’ to be used as a trademark to bring an infringement action.
  • MHPL was the registered proprietor of the trademark YO! CHINA in Class 30 and Nestlé was using ‘Masala Yo!’ and ‘Chilly Chow Yo!’ for noodles in the same class. Use of the term ‘Yo!’ by Nestlé for similar goods showed an intent to cause confusion.
The division bench set aside the interim order of the single judge, holding that ‘Yo!’ was not used as a trademark by Nestlé. Instead, ‘Yo!’ was used to attract the attention of consumers. Further, ‘Yo!’ was not used in isolation, but as part of the expressions ‘Masala Yo!’ and ‘Chilly Chow Yo!’ to describe the characteristics of the flavours. Therefore, the first condition to sustain an infringement action - namely, use as a trademark - was not satisfied.  
 
The court was also of the view that MHPL had failed to show that ‘Yo!’ had acquired distinctiveness, as all the evidence related to use of the expression ‘Yo! China’. The court further held that there was no evidence that the word ‘Yo!' in 'Masala Yo!' and 'Chilly Chow Yo!' created a connection with MHPL’s goods. The court also stated that, due to the prominent use of the MAGGI mark on Nestlé's products, the word 'yo!' retained its original meaning as an exclamation. 
 
Abhishek Nangia, Ranjan Narula Associates, associate firm of Rouse Group, Delhi

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