The 'Wow' Factor: Section 11 And the Jurisprudence of Trademark Confusion in Food Brands

Introduction

India's​‍​‌‍​‍‌​‍​‌‍​‍‌ food sector is growing fast, and the competition of the brand identity has become very intense. Quick service restaurants, food delivery platforms, and cloud kitchens are the major players in the market. In such a hyper, competitive environment, not even a single word can be chosen without risking legal battles. That brings the question: can a business in the food industry be the only one to use a word like "WOW"?

The case of Wow Momo Foods and Wow Burger, which has been discussed in the Delhi High Court, is an example of the conflict that arises when one side wants to protect the commercial goodwill of the brands, and the other side wants to preserve the linguistic commons for new entrants to compete. In​‍​‌‍​‍‌​‍​‌‍​‍‌ determining how exclusive such words should be, the court reckons with the problem of a broader debate about distinctiveness, consumer perception, and the boundaries of trademark protection in a market where new products or services usually take their names from the trend of ​‍​‌‍​‍‌​‍​‌‍​‍‌innovation.[i]

The Legal Framework: Section 11 As Consumer Guardian

One​‍​‌‍​‍‌​‍​‌‍​‍‌ of the main provisions that allow the refusal of trademark registration on relative grounds is Section 11 of the Trade Marks Act, 1999. While Section 9 establishes absolute grounds for refusal based on the intrinsic features of a mark, Section 11 is about the conflicts of the rights of others. The section reflects two principal notions: first, it forbids confusion in Section 11(1), and second, it safeguards well-known trademarks in Section ​‍​‌‍​‍‌​‍​‌‍​‍‌11(2).  

The law is set up in a way that puts the consumer at the center of the system. According to Section 11(1)(a), registration is refused in case a mark is identical to an earlier trademark and the two marks are used for similar goods or services, thus creating a possibility of confusion.

[ii] Section 11(1)(b) further extends this protection to cases where the similarity, instead of the identity, is involved, on the understanding that consumers get the general idea rather than doing an in-depth analysis. The provision also recognizes that confusion may not only be a direct misidentification, but also "likelihood of association" whereby consumers may think products come from the same or related ​‍​‌‍​‍‌​‍​‌‍​‍‌sources.

Judicial Evolution: The Tests That Shape Trademark Law

Indian​‍​‌‍​‍‌​‍​‌‍​‍‌ courts have developed sophisticated analytical frameworks for assessing likelihood of confusion. The Supreme Court's landmark decision in Amritdhara Pharmacy v. Satya Deo Gupta laid down the foundational principles which take their bearings from the decision and are followed by the later cases.[iii] The Court introduced the "man of average intelligence and imperfect recollection" test and at the same time it recognized that consumers get overall impressions and do not compare goods side, by, side. This test considers phonetic, visual, and structural similarities from the point of view of common buyers who do not have perfect memory.

The anti, dissection rule was one of the important changes to the legal system. The evaluation of trademarks has to be done on the basis of the whole, instead of dividing the trademarks into component parts. By this principle the consumers of the marketplace, the ones who see "WOW MOMO", are acknowledged as people who do not separate "WOW" from "MOMO" in their minds but keep a single impression.

In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. the Supreme Court elaborated those concepts with an idea to products where even small confusions could be dangerous. While dealing with pharmaceutical trademarks, the Court held that stricter scrutiny should be applied when consumer mistakes can lead to serious harm.[iv] The decision pointed out the most important factors: kinds of marks, extent of resemblance, nature of goods, similarity in character and performance, and the category of the purchasers. Courts should also take into account that doctors may write prescriptions in a hard-to-read manner or give them over the phone thus increasing the chances of mistakes.

Although Cadila dealt with pharmaceuticals, the rules laid down in that case are applicable to other industries as well where the confusion of consumers can lead to serious consequences. For instance, in the food industry where there are mostly impulse purchases and consumers may have different levels of literacy and sophistication, it is equally important to be very ​‍​‌‍​‍‌​‍​‌‍​‍‌careful.

The Common Word Conundrum

Trademark​‍​‌‍​‍‌​‍​‌‍​‍‌ law has been uncertain for a very long time whether descriptive, praising or common words should be given exclusive rights. Words like "SUPER, "BEST," or "WOW" are cases that challenge the system most seriously, as these words are the most common ones to be used to express quality or delight. To grant such monopolies over those expressions means to put legitimate commercial speech and competition into a very small room from which it becomes very difficult to escape.

Section 9(1)(b) of the Trade Marks Act is very explicit about this point and it prohibits the registration of marks that only describe the quality or the characteristics of the goods or services. Nevertheless, the acquired distinctiveness doctrine (secondary meaning) offers a way out. With a long and uninterrupted use even in common words, they may acquire trademark significance thus becoming the words most closely associated with certain sources in consumers' minds.[v]

The onus to show secondary meaning is very much on the side of the claimants. Courts ask for very strong proof that the term has gone beyond its ordinary meaning to denote a particular source. Among the qualifying factors are the length and the exclusivity of the use, advertising expenditure, market penetration, and consumer surveys showing the ​‍​‌‍​‍‌​‍​‌‍​‍‌association.

Wow Momo V. Wow Burger: A Case Study in Commonality

The Justice​‍​‌‍​‍‌​‍​‌‍​‍‌ Manmeet Pritam Singh Arora in his September 2024 decision provides an example of a court unwilling to allow take over of common expressions without much hesitation. Wow Momo Foods, an Indian brand operating over 600 outlets across India since 2008, filed a suit against Wow Burger for using the "WOW" formulation. The plaintiff claimed that "WOW!" was the most significant and the most dominating feature of its brand family comprising "WOW! MOMO," "WOW! CHINA," and "WOW! CHICKEN."[vi]

Justice​‍​‌‍​‍‌​‍​‌‍​‍‌ Arora's decision was exemplary in detail and firmness. The first thing to do was to check the trademark registrations of Wow Momo which revealed a significant weakness: the firm did not have a separate trademark registration for "WOW". There were only registrations for the combined marks, and some of them had the disclaimers that prevented the exclusive claims of individual ​‍​‌‍​‍‌​‍​‌‍​‍‌components..[vii] The​‍​‌‍​‍‌​‍​‌‍​‍‌ Court observed that Wow Momo had conceded to the Registrar that "WOW" by itself, being a word from the dictionary, was not distinctive and needed to be combined with other elements to make sense.

Additionally, the Court rejected the assertion of a secondary meaning because it recognized almost no evidence for the sole association of "WOW" with Wow Momo. The Court found that even after the use of 2008, exclusive consumer identification could not be established, among other reasons, because numerous food businesses use the word "WOW" in their ​‍​‌‍​‍‌​‍​‌‍​‍‌branding.  The judge pointed out that "WOW" is a word of praise and it is used as such in the food and hospitality industry, where it is a kind of universal delight about the quality.[viii]

While comparing "WOW! MOMO" with "WOW BURGER," the Court did not find any similarity that could mislead the consumers except the common word shared by both. The color schemes, stylization, and the overall presentation were very different. Besides, Wow Momo's menu itself was inconsistent, its alleged "WOW! BURGER" product had disappeared after 2018, replaced by "Moburg," hence, the statement continuous burger, related use, was undermined.

The ruling embodied an essential point: trademark law should not allow businesses to language fence off everyday unless they have given compelling proof of distinctiveness. Justice Arora opined that such an act of monopolization would be very wrong as it "private preserve/property" would be turning common exclamations ​‍​‌‍​‍‌​‍​‌‍​‍‌into.[ix]

The Appellate Reversal: Family of Marks Doctrine

Nevertheless,​‍​‌‍​‍‌​‍​‌‍​‍‌ that was not the last of it. In an appeal in October 2024, the Delhi High Court Division Bench overruled the single judge's decision and directed the issuance of an injunction against Wow Burger.[x] The reasoning of the appellate court was quite different from that of the first instance court as it mainly referred to the "family of marks" concept and "idea infringement" concept.

The Division Bench was of the opinion that the combination of "WOW" with food item names such as "MOMO," "DIMSUMS," "BURGER" results in the creation of unique composite marks that can be used as source identifiers. The Court located the brand family of Wow Momo using the common "WOW" prefix as one of the members. Average-intelligence consumers with imperfect recollection, coming across "WOW BURGER," would in all probability think that it was the product line of the Wow Momo brand.

Quite importantly, the appellate court pointed out that infringement and passing off are two different issues. In the case of trademark infringement under Section 29, the main focus is still on the comparison of the trademarks, and not on the differences in the packaging or the variations in the menu. The Court stated that the single judge was wrong in his consideration of such factors, which are relevant for passing off but not for infringement ​‍​‌‍​‍‌​‍​‌‍​‍‌claims.

The Broader Implications

[Image Sources: Shutterstock]

These​‍​‌‍​‍‌​‍​‌‍​‍‌ differing decisions throw light on the tensed situation of trademark laws which have been lingering for a long time. First, a judgment was made that focused on the prevention of monopolizing common language, showing that the fears of market foreclosure and competitive fairness were the main concerns. The appellate decision, on the other hand, put the emphasis on consumer protection and recognition of the brand equity that was built, thus, admitting that even common words can become distinctive if they are used creatively and consistently in a brand family.

The final decision, therefore, has a great impact on the food industry stakeholders. The startups which are planning to brand in a catchy and expressive way need to know that common words only give them uncertain protection. One can only build a trademark portfolio by pairing such terms with distinctive elements, unique graphics, specific color schemes, innovative combinations that together create a protectable composite mark.

On the other side, the well-known brands have to prove that they have used the product consistently and exclusively in order to be able to claim secondary meaning of the common expressions. Proof of market recognition, advertising investments, and consumer surveys become very important. Nevertheless, even in the presence of such evidence, courts will decide if it is beneficial for the public to grant exclusivity or if it is just a way of foreclosing legitimate ​‍​‌‍​‍‌​‍​‌‍​‍‌competition. The food sector's characteristics amplify these concerns. Quick, service purchases involve low involvement and imperfect attention. Consumers often order via apps, seeing only names and images briefly. Literacy levels vary dramatically, affecting how consumers process textual information. These factors counsel caution in both trademark adoption and enforcement strategies.[xi]

Conclusion

The​‍​‌‍​‍‌​‍​‌‍​‍‌ "WOW" lawsuit is a story about more than just a fight between restaurant chains, it is a story about the fundamental issues of the trademark law. According to consumer protection mandate of Section 11, confusion should be avoided, but not at the expense of allowing linguistic monopolies to go unjustified. The courts should be like a tightrope walker between brand equity that is already built and the competitive marketplace that is still there.

As the Wow Momo, Wow Burger dispute turns out, the surroundings are the most important. Common words hardly ever deserve to be protected on their own, but they can become significant because of the distinctive use within the brand families. The family of marks doctrine is a way of compromise; it safeguards creative brand architecture and at the same time stops the monopolization of individual common terms.

For brands in the food industry, the message is obvious: distinctiveness is very important. Just using common words that are also expressive without any further element will bring challenges and uncertainty. Successful branding is layering multiple distinctive elements that individually may not mean much, but together create strong consumer associations. In trademark law, "WOW" by itself may not be sufficient, the entire bundle of rights determines the possibility of protection.

The back and forth about whether brand investments should be protected or the competitive space should be maintained still influence Indian trademark jurisprudence. Courts will have to deal with this issue more and more as the food industry becomes more and more crowded. The question of whether "WOW" will finally be the property of one, many, or all is still undecided, however, the answer will affect a lot the way the food businesses will create and protect their brands in the ​‍​‌‍​‍‌​‍​‌‍​‍‌future.

Author: Prince Lucky Jain, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[i] See Wow Momo Foods Pvt. Ltd. v. Wow Burger & Anr., C.S.(COMM) 546/2024 (Delhi H.C. Sept. 12, 2024).

[ii] Id. § 11(1)(b).

[iii] Amritdhara Pharmacy v. Satyadeo Gupta, (1963) A.I.R. 449 (India).

[iv] Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 S.C.C. 73 (India).

[v] Understanding Section 11 of Trade Marks Act, 1999, THE LEGAL SCHOOL (last visited Dec. 8, 2024), https://thelegalschool.in/blog/section-11-trademarks-act-1999.

[vi] 'Wow' Can't Be Monopolised: Delhi High Court Refuses Interim Injunction in Wow Momo vs Wow Burger, BAR & BENCH (Sept. 13, 2024), https://www.barandbench.com/amp/story/news/litigation/wow-cant-be-monopolised-delhi-high-court-refuses-interim-injunction-in-wow-momo-vs-wow-burger.

[vii] Delhi High Court Refuses Interim Injunction in Wow Momo's Trademark Infringement Suit Against Wow Burger, LAWBEAT (Sept. 13, 2024), https://lawbeat.in/news-updates/delhi-high-court-refuses-interim-injunction-wow-momo-trademark-suit-wow-burger-1518452.

[viii] When 'WOW' Isn't Your Own: Trademark Infringement Between MOMO and BURGER, BANANAIP INTELLEPEDIA (Sept. 15, 2024), https://www.bananaip.com/intellepedia/trademark-infringement-wow-momo-vs-wow-burger/.

[ix] 'WOW' Is for Everyone, Not Just Momo: Wow Momo vs. Wow Burger Verdict, THE420.IN (Sept. 13, 2024), https://the420.in/wow-momo-delhi-high-court-trademark-case-wow-burger/.

[x] WOW Momo Wins Appeal: Court Grants Injunction Against WOW Burger, MONDAQ (Oct. 28, 2024), https://www.mondaq.com/india/trademark/1697442/wow-momo-foods-private-limited-vs-wow-burger-anr.

[xi] Determining Similarity Between Rival Marks Part 1, KHURANA & KHURANA (Dec. 7, 2023), https://www.khuranaandkhurana.com/2023/12/07/determining-similarity-betweesn-rival-marks-part-1/.