Small victory for Cadila over use of SUGAR FREE

In the case between Cadila Healthcare Ltd and Diet Foods (India), the Delhi High Court has granted an ex parte interim injunction restraining Diet Foods from using the trademark SUGAR FREE for cookies (Case CS (OS) 222/08).

Cadila manufactures and sells sugar substitutes under the brands Sugar Free Natura, Sugar Free Gold and Sugar Free D'Lite. Cadila claims that it has a market share of 74% and that the mark SUGAR FREE has acquired a secondary meaning through use in India.

Cadila filed three suits simultaneously against three separate defendants (including Dabur Foods and Diet Foods) over their use of the expression 'sugar free'. All suits came up for admission on February 5 2008. No injunction was issued against Dabur.

In reaching its decision to grant an ex parte injunction against Diet Foods, the court took into account the following factors, among others:

• Before the court, Diet Foods did not identify its products by any brand name except SUGAR FREE. Therefore, Diet Foods did not use the mark SUGAR FREE in its descriptive sense.
  
  
• Diet Foods' packaging displayed a statement that the cookies were sweetened with Splenda, a sugar substitute manufactured by a competitor of Cadila.

The Delhi High Court recently issued an order in another case involving the trademark SUGAR FREE which is likely to have a bearing on the eventual outcome of the present case (2008 (36) PTC 168; Case CS (OS) 605/07). In the earlier case, the defendant manufactured frozen desserts and used the trademark SUGAR FREE in conjunction with its trademark AMUL. The judge held as follows:

"I have no hesitation in stating, albeit without prejudice to the rights and interests of the plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression ('sugar free') as its trademark, the plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the widespread use of such trademark by fellow competitors… The challenge… before this court is to provide such relief as would maintain the balance between the private right of the plaintiff to use the expression 'sugar free' as its trademark and the larger public right of traders to use the said expression in its descriptive sense… Although a conclusive decision in the present case can be made only after evidence is led and the case is adjudicated on the merits, as of now I am of the prima facie view that no imminent injury is likely to be caused to the plaintiff if the defendant is allowed to use the expression sugar free on the packaging of its product… It is clarified that the defendant is free to use the expression 'sugar free' in any other manner which allows it to describe the special attributes of its product Pro Biotic Frozen Dessert without leaving any scope for confusion."

In that case, the plaintiff's application for interim injunction was disposed of with directions that the defendant:

• be restrained from using the expression 'sugar free' in a larger font size than its trademark AMUL; and
  
  
• be free to use the expression 'sugar free' - as part of a sentence or as a legend - in order to describe the characteristics of its products.

A decision on whether the SUGAR FREE mark is descriptive or generic may emerge only after trial. The courts have recognized that even highly descriptive marks are not inherently unprotectable and that the principles of passing off may apply in certain cases. However, the courts will rarely prevent a party from using a mark in its descriptive sense. In the present case, the court based its decision on Cadila's argument that the SUGAR FREE mark deserves protection against passing off where a third party uses the expression 'sugar free' in a conspicuous manner.

Binny Kalra, Anand And Anand Advocates, New Delhi