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CADILA HEALTHCARE LTD Versus GUJARAT CO-OPERATIVE MILK MARKETING FEDERATION LTD. & ORS

2009 (9) TMI 1025 - DELHI HIGH COURT

FAO (OS) No. 62/2008 - Dated:- 8-9-2009 - MUKUL MUDGAL/ VIPIN SANGHI For the Appellant : Mr. Mihir Thakore, Sr. Adv. With Ms. Pratibha M. Singh, Ms. Bitika Sharma, Bijal Chhatrapati, Ms. Shrada Seth Advs. For the Respondent : Mr. Mihir Joshi, Sr. Adv. with Mr. Arvind Nigam, Mr. Pranit Nanavat, Mr. Rishi Agarwal, Advs. J U D G M E N T MUKUL MUDGAL, 1. The present appeal arises from the judgment/ order dated 23rd October, 2007 in CS (OS) No. .....

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also filed cross objections to a limited extent. 2. The brief facts of the case as per the appellant are as follows: - a) In 1988, Cadila Chemicals Ltd. an erstwhile company of Cadila Group developed and launched in the market, a product containing Aspartame an artificial sweetener as a low-calorie table-top sweetener, which is as sweet as sugar containing only 2% of its calories. b) The appellant's product containing 'aspartame', a protein derivative, was launched under the brand n .....

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rty, rights and trademarks, both registered and unregistered, vide a judgment and order dated 2nd May 1997 of the Gujarat High Court passed in Company Petition No.82/1996. d) By virtue of the said order, certain assets of Cadila Chemicals Ltd. including its trademark 'Sugar Free' and other marks along with their goodwill came to be transferred to and became vested in the appellant, and as a result the appellant became the proprietor of the brand name/trade mark 'Sugar Free' with .....

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he respondents adopted a trade mark consisting of the words 'Sugar Free' for their frozen dessert, identical with and deceptively similar to the appellant's various trademarks, the essential feature of each of which is the words 'Sugar Free' as a trademark in respect of their products. 3. The appellant filed a suit before the learned Single Judge seeking a decree of permanent injunction for restraining the respondents from using in any manner, particularly in relation to thei .....

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scertained within a specific and limited classes of consumers. Such persons can include medical professionals, patients of diabetics/heart patients or simply those who are fashionably health conscious. (b) Consequently, the distinctiveness associated with the appellant s trademark is essentially relative and is in respect of a particular class of consumers. Thus, the distinctiveness of a trademark can only be ascertained in relation to consumer-base. (c) The data produced by the appellant does n .....

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n relation to the appellant s product. At this interim stage the respondent s goodwill and the typical style and packaging coupled with the well aware customer base which can easily distinguish between the appellant s and the respondent s product and deception is thus, prima facie, ruled out. (d) While there is no perceptible similarity between the two different packaging in terms of colour scheme and get up, sugar free has been written in more prominent form than that of Amul, thus focusing on .....

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are available to the respondent to describe its product, does not imply that the appellant can be allowed to arrogate itself to monopoly to use the expression Sugar Free which is inherently descriptive in nature and has become publicis juris in relation to food and beverages. (h) Mere descriptive distinction of a trademark by a trader, irrespective of acquisition of secondary meaning and distinctiveness in relation to trader/appellant s product cannot entitle the appellant to preclude others fr .....

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he court of its bonafide intention to use the said expression, not as a trademark but only in descriptive and laudatory sense. (i) There may exist a fair risk of misleading the consumers of appellant into believing that the appellant s product figures as an ingredient in the respondent s pro-biotic frozen dessert. 5. Consequent to the above findings, the learned Single Judge directed as under: - (i) The defendant is restrained from using the expression Sugar-free in the present font size which i .....

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d that: i) The appellant s trade mark Sugar Free is a coined word and an ungrammatical combination of two English words. Even assuming that it is not a coined word, even then it is not descriptive of the appellant s product but merely suggestive. The appellant s product which is an artificial sweetener cannot be directly consumed or eaten. Sugar Free would not be apt to describe an item which is not directly consumed but is merely an additive. The appellant has adopted it as a mark for a sugar s .....

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be termed free of sugar and only the foods or beverages so made could be described as free of sugar. Aspartame or Sucralose are artificial sweeteners or sweetening agents which can be used in lieu of sugar. Such chemical compounds cannot be described free of sugar. Sugar Free is therefore not descriptive of a sugar substitute or Artificial Sweetener such as Aspartame/Sucralose. At the highest Sugar Free is suggestive of the use to which the chemical compound can be put to. A correct description .....

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ct from 25th June 2004 prohibited manufacture, sale and import of articles of food containing artificial sweetener, other than carbonated water, soft drink concentrate, supari, pan masala and pan flavoring material and it is only with effect from 25th June 2004 that it is permissible to use artificial sweetener in certain food articles. This would also show that in terms of the requirement of law, chemical compounds which sweeten food articles are described as artificial sweetener/tabletop sweet .....

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ment of the respondent that Sugar Free is a familiar English word and therefore the Baby Dry judgment does not apply, fails to properly appreciate the ratio of the Baby Dry judgment where the emphasis is not on familiar expression in English language but on familiar expression in English language for designating baby nappies or for describing their essential characteristic. The appellant s plea that the word Sugar Free is not descriptive of its product and merely suggestive cannot be prima facie .....

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rst time cannot be sustained for the reasons herein below: i) The Sweeteners cannot be divided by creating two classes - sugar based and sugar free. The correct criteria for describing the sweeteners would be - natural sweeteners and artificial sweeteners. Natural sweeteners are substances like sugar, jaggery, brown sugar etc. Artificial sweeteners are the genus of which Saccharine, Aspartame, Sucralose are species. These artificial sweeteners can never be termed as sugar free sweeteners either .....

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uestion is put to a person well-versed in chemical compounds, the question will be answered by saying it is Saccharine or Aspartame or Sucralose, as the case may be. None of them will answer that the product is Sugar Free Sweetener or much less, Sugar Free . The answer to the above question therefore, would never be Sugar Free and consequently, Sugar Free is not generic. iv) It would be pertinent to point out that Sugar Free is neither an attribute, nor an adjective, vis-à-vis an artifici .....

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or biscuits or chyawanprash, the answer to the above question cannot be sugar free and would necessarily be ice cream or cookies or biscuits or chyawanprash as the case may be. vi) All products that are free of sugar are generally meant for the diet conscious or for the diabetics. If such products do not contain sugar, Sugar Free is at the most descriptive of such products and cannot be termed generic of such product. C) It is evident that Sugar Free is neither generic of artificial sweeteners .....

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k. Moreover, even in respect of such food articles which do not contain sugar, the use of Sugar Free purportedly to describe them is only after the amendment of the Prevention of Food Adulteration Act, 2004 and much after the appellant had acquired huge reputation and goodwill in respect of its product. Such user clearly is tantamount to passing off. D) The word Sugar Free has become distinctive of the sugar substitute and has acquired a secondary meaning in the sugar substitute (Artificial Swee .....

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ed use and is entitled to similar protection, and that a man has no right to put off his goods for sale as the goods of a rival trader and induce purchasers to believe that the goods which he is selling are manufactured by another entity or are connected in some manner with such other entity. The appellant can take action against anyone who seeks to use their goods in such a manner that it would indicate some connection with the appellant. The appellant s mark Sugar Free has become distinctive i .....

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on would be entitled to the same wide scope of protection afforded to the most fanciful and invented mark. That is, a descriptive mark, upon attaining a secondary meaning may be protected just as if it had been strong and arbitrary or fanciful at its inception. Even the most descriptive term is capable of becoming very well-known and a strong mark through extensive consumer recognition and association. The evaluation of the strength of a mark depends solely upon the placement of a term on the sp .....

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sugar substitute is a well known and a strong mark. It has been in the market for the last 17 years. There has been substantial advertisement in respect of the appellant s product both on TV channels and in newspapers. The appellant has almost 3/4th of the market share in sugar substitutes. The appellant s mark even if termed as descriptive has attained a secondary meaning in the context of sugar substitutes and has to be protected just as if it had been a strong and arbitrary and fanciful mark .....

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ackaging clearly indicates use in the trademark sense and not merely to describe the characteristics of the product. If it was only to describe the product characteristics, it could have been used in any other manner. In fact, the packet of Frozen Dessert already contains the following words INDIA S FIRST SPECIALLY CREATED LOW FAT DIABETIC DELIGHT which is sufficient to describe the product and there was absolutely no need to use the word Sugar Free . (4) The Gujarati advertisement translates al .....

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d is Sugar Free, it could be understood that the respondent has used Sugar Free to describe the product, but when product can be described in innumerable other ways such as Free of Sugar , Sugar Less , No Sugar , contains artificial sweetener etc., the use of the distinctive trade mark of the appellant is dishonest. (8) The respondent had negotiated to purchase appellant s Sugar Free for the purpose of manufacturing and marketing diabetic ice-cream. In view of this, it became the duty of the res .....

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ertisements and the repeated use of the term Sugar Free in the advertisements clearly indicates that the term Sugar Free is not used in purely descriptive sense. The use by the respondent is not fair. Fair use of a descriptive word by the respondent would be in a non trademark sense. In the instant case, there is an overuse of Sugar Free clearly demonstrated by the public advertisement hoardings. The use by the respondent of Sugar Free is not to describe his goods is evident, inter alia, from th .....

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product is different and their style of writing font is different is only to answer the conventional concept of Passing Off. The fact that AMUL is written and for that reason no person is likely to believe that the product is the product of the appellant does not answer the other tests of Passing Off. I) Thus, permitting the respondent to use the mark Sugar Free will lead to passing off, confusion and deception in the following manner: (1) Consumers or at any rate some of them will believe that .....

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enter into other Foods and Beverages for Diabetics market like Sugar Free Dlite Jello/Ice-cream/Frozen desserts/Cake mix etc. There could be serious confusion in the market which can cause damage to the reputation of the appellant. If everyone is allowed to use Sugar Free , there will be not only confusion but dilution of the appellant s well established mark. J) The learned Senior Counsel Shri Thakore concluded his arguments by emphasizing that a clear case of passing off arises and the argumen .....

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the present day context and in particular in light of the various decisions rendered by this Court. Differences are sufficient in case of descriptive marks is also of no substance because (i) the mark is suggestive and not descriptive (ii) descriptive mark has become distinctive and is entitled to the same protection as a fancy word and the fact that (iii) the differences in the get up should be sufficient to reject the claim for passing off has not been accepted in India in categorical terms b .....

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esh Gupta 2002 (24) PTC 355 (Delhi). iii). Societe Des Products NESTLE S.A. v. Gopal Agencies, 2002 (24) PTC 369 (Delhi). (iv) Essel Packaging v. Shridhar Narra, 2002 (25) PTC 233 (Del.). (v) Caterpillar Inc. v. Mehtab Ahmed, 2002 (25) PTc 438 (Del) (vi) B. K. engineering Co. v. Ubhi Enterprises (Regd) & Anr., AIR 1985 Delhi 210. (vii) LEGO System Aktieselskab & anr. v. LEGO M. Memelstrich Ltd. 1983 FSR 155. 7. The learned Senior Counsel for the respondent Mr. Mihir H. Joshi articulated .....

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same is a combination of common English words which was widely used prior to the purported adoption by the appellant, and in any case even a mark which may be used in a descriptive sense is not considered distinctive as per Section 19(b) of the Trade Marks Act, 1999 (hereinafter referred to as the TM Act). iv. The judgment in the case of Baby Dry (supra) is inapplicable since the combination was permitted registration in view of their syntactically unusual juxtaposition which was not a familiar .....

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ed by the plaintiff. In the first place, it is common ground that the defendant is using the mark HOME TOWN in respect of the services provided to its customers and not the mark HOME SOLUTIONS . Moreover, the mark used by the plaintiff is associated with its name ASIAN PAINTS which precedes the expression HOME SOLUTION . Besides, the registered device of the plaintiff is an artistic work which depicts a house in the alphabet O in expression HOME . I find substance in the argument of the defendan .....

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OLUTIONS . The product of the appellant being a sweetener without sugar, the mark answers the question what are you? - Sugar free sweetener, and therefore names the product. No amount of evidence of secondary meaning would ever convert the term into a trademark. C) The mark Sugar Free is generic in nature and common to trade and therefore cannot identify the source of the product because of its very nature and use. In the case of Colgate Palmolive Co. Ltd. and Anr. Vs. Mr.Patel and Anr. 2005 (31 .....

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ination which together constituted a trade mark entitled to protection by virtue of such registration. In the instant case too, the colour combination of red and white on its own does not identify the source of the product since the red and white colour combination is quite generic in nature and common to toothpaste trade as demonstrated by the various products and their labels relied upon by the defendants. Moreover, there is nothing innovative or distinctive in using the colour, white for writ .....

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t and is an unprotectable generic name. Thus, Sugar Free is a simple word extensively and commonly used, which by its very nature is incapable of losing its primary meaning. D) Assuming that the mark is capable of acquiring distinctiveness, the fact that the primary meaning of the word is simple and easy and coupled with the fact that it is commonly and extensively used, sets the bar extremely high for a trader to claim a monopoly therein and the utmost difficulty should be put in the way of any .....

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stered trade mark to interfere with any boana fide use by a person of his own name or that of his place of business, or of the name , or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character of quality of his goods or services. The fact that the plaintiff commenced the business of providing similar services to its customers in earlier point of time, does not militate against the defendant who is using .....

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is a generic term descriptive of the nature of services. Counsel for the defendant has justly relied on the exposition in the case of McCain International Limited v. Country Fair Foods Ltd. and Anr. 1982 (2) PTC 156 (CA). This is a decision of the Court of Appeal which dealt with the issue as to the consequences of adopting a descriptive name. the Court held that the descriptive name does not indicate the source of goods, but the nature of the goods when the fancy name is an indication of a sin .....

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employing a word or term of well-known signification and in ordinary use….is yet able to acquire the right to appropriate a word of term ordinary use in the English language to describe his goods, and to shut others out from the use of this descriptive term, he would really acquire a right much more valuable than either a patent or a trade mark for he and his successors in business would gain the exclusive right, not for a limited time as in the case of patent, but for all time coming, t .....

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a person employing a word or term of well-known signification and in ordinary use, though he is not able to obtain a Patent for his manufacture, and although he has not got the protection of a registered Trade Mark for the goods he is proposing to sell, is yet able to acquire the right to appropriate a word or term in ordinary use in the English language to describe his goods, and to shut others out from the use of the descriptive term, he would really acquire a right much more valuable than ei .....

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uming the appellant succeeds in establishing distinctiveness of the mark, even then the appellant is not entitled to any injunction since the respondent is not using the mark in a trademark sense but merely as a common descriptive adjective. The respondent is not selling its products under that name or business style. Even registration of the mark would not entitle the appellant to such injunction as per Section 35 of the TM Act. (i) In the case of Ayushakti 2003(5) Bombay C.R. 523, it was held .....

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suggests that use of the product would contribute to life, well being and strength. In a situation such as this it is settled law that where such words are used, unless the plaintiff shows that the words have acquired a secondary significance, such that it has displaced the primary significance and meaning of the word, the defendants should not be prevented from using similar words which are part of common language. Viewed from that angle, it is clear that the Plaintiffs mark AYUSHAKTI is not t .....

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tly or by implication, by the language used, the plaintiffs would of course be entitled to a remedy. But where the plaintiffs proof shows that the only representation by the defendants consists in the use of a term of terms which aptly and correctly describe the goods offered for sale, as in the present case, it must be a conditions of the plaintiffs success that they shall prove that these terms no longer mean what they say or no longer mean only what they say or no longer mean only what they s .....

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e which every one has, to employ words in ordinary use which are an apt and proper description of the goods for sale. I think the observations are applicable to the present case. 22. Having come to the conclusion that there is no confusion likely to arise in the two rods I am also of view that the use of the word AYUSH would not create any confusion as there is reason for coming to this confusion that there is no confusion in the words. Since the words are not similar, and are pronounced and als .....

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. It must be remembered that claims in passing off action are not for an infringement of property rights but for misrepresentation by the Defendant. Therefore, if the alleged confusion is the result of the exercise by the Defendant of his legitimate rights to use certain common words in order to compete with the plaintiff the Court must be hesitant in granting such an injunction. At the prima facie stage, without actual instances of witness having been deceived, it would be sufficient for the co .....

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liance was placed on the case of Profit Maker Trade Mark (1994) RPC 613 wherein it was held as under: - It is just the sort of combination of two common words which others traders might well wish to use. Indeed, the similar expression MONEYMAKER is to be found in the dictionary. The fact that honest traders have a number of alternative ways of describing a product which will make profits is no answer to the criticism of the mark. F) There is no passing off since the use of the mark by the respon .....

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trade to highlight the class/category to which the foods/drinks belong, and the manner of use by the respondent is not different. (iv) In the field of foods/drinks the target consumer is accustomed to a large number of products across all categories bearing the words Sugar Free and therefore there is no real possibility of deception that all such goods are connected with the appellant. (v) The words Sugar Free are always used along with the trademark AMUL of the respondent within the same visua .....

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particularly in view of the bland, common font styling, which is completely different than that used by the appellant. (viii) No ordinary sensible member of the public would be confused and there is absolutely no evidence to establish prima facie that such confusion has resulted or is likely to result. (ix) There is dilution of the mark if the words are used in the descriptive sense. (x) There is no evidence of damage or likelihood of damage on account of use of the mark by the respondent. G) T .....

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ctural, not reasonable and without any evidence to prima facie establish this plea. It overlooks the fact that the mark is commonly and widely used throughout the world including India and no sensible consumer is likely to assume that such usage is indicative of the source or of the product of the appellant being an ingredient of such goods, and more so since the words are written in a completely different style than that used by the appellant. For such assumed confusion precise copying would be .....

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e it would be applicable to the entire range of products available throughout the world which bear the mark Sugar Free. The case of Glucovita (AIR 1960 SC 142) relied upon by the appellant was a case where the appellant s mark was registered and the respondent had sought registration of a trademark in respect of goods of the same description, which mark was held to be sufficiently similar so as to be reasonably likely to cause deception and was therefore refused registration, and the principle o .....

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de as highlighting the characteristic/category of the product and use by the respondent including prominent sizing being absolutely in the manner used in the trade no restriction could have been imposed. 8. In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the lea .....

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eaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products. 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 trade mark, the plaintiff must be prepared .....

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to use this expression only in its descriptive sense and not as a trade mark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages. We fully agree with and reaffirm the said finding. 9. We are unable to hold that the appellant s trademark "Sugar Free" is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant s product cannot be directly consumed or eaten and merely is an additive does not .....

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es cannot detract from the common usage of the phrase Sugar Free as denoting products which do not contain sugar and any trader which adopts such mark in the market place, does so with the clear knowledge of the possibility of other traders also using the said mark. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Act. The said Sections read as follows: - 9. Absolute grounds for refusal of registration.- .....

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marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. (2) A mark shall not be registered as a trade mark if- (a) it is of such nature as to deceive the public or cause confusion; .....

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necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. 30. Limits on effect of registered trade mark.-(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use- (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental .....

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wise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend; (c) the use by a person of a trade mark- (i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or .....

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he fact, that those services have been performed by the proprietor or a registered user of the mark; (d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are .....

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e goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of- (a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or (b) the goods having been put on the market under the registered trade mark by the proprietor or wit .....

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or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. (emphasis supplied) Thus, it is clear that the mark or indication which serves to designate the quality of the goods of the appellant, which indeed the phrase Sugar Free does, would be an absolute ground for refusal of registration of a mark unless it has acqu .....

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expression Sugar Free is a coined word and is distinctive in nature. Apart from the fact that the law laid down in the case of Baby Dry is not binding on us, it is also relevant to notice that in the said case the court permitted the registration on the basis of the categorical findings that the expression Baby Dry was a syntactically unusual juxtaposition of two independent English words and was not a familiar expression in the English language. In our view, the expression Sugar Free is neither .....

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dary meaning which identifies it with a particular product or has been from a particular source. It is also relevant to mention here the judgment of Home Solutions (supra) was also relied upon by the respondents, wherein it was held that the expression HOMESOLUTIONS is inherently incapable of becoming distinctive of any single person with respect of any single product or service. It is generic and publici juris. It describes the nature of services offered. Thus, in our view, the mark Sugar Free .....

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unctional sense, that is, in terms of utility when added to foods and beverages. To an average consumer, a sweetener is known to exist only when added to food and beverages, and its own identity gets merged in the food and beverages to which it is added. Thus, the expression Sugar Free when used in relation to a sweetener may really describe a sweetener in the sense of its generic meaning, and what it connotes is the specific nature and characteristics of the product. 12. In support of the conte .....

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. (supra). In our view, before ascertaining whether the expression Sugar Free has acquired a secondary meaning and assumed distinctiveness what has to be borne in mind is the specialized nature of the appellant s product. Being essentially a sweetener, the popularity of the sugar free range of product will have to be necessarily ascertained to be popular amongst the specific or limited class of consumers. Sugar Free is an item consumed by the elite class of consumers who are aware of the utility .....

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eads to the conclusion that the expression Sugar Free cannot be held to have acquired such distinctiveness qua the food products in general which may bar its user at least in a descriptive sense by any other competitors in the field of food products. Besides the above factors such an elite class of customers is well informed and is unlikely to be misled into believing the defendant s to be that of the plaintiff/appellant. 13. In the case of Cadila Healthcare Limited v. Shree Baidyanath Ayurved B .....

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for me to accept the plaintiff's claim of the expression "Sugar Free" being a coined word. "Sugar Free" cannot, in the least, be a coined word and neither does "Sugar Free" appear to me an unusual combination or juxtaposition of words...." [See: para 24 of Sugarfree-I] 2) ...Thus, the expression "sugar free", when used in relation to a sweetener/sugar substitute, may not be "descriptive in meaning" but it is certainly "descriptive i .....

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sense as well known trade marks...." [See: para 34 of Sugarfree-I] 4) ...Thus, while ascertaining the distinctiveness of a trademark in relation to a product, it is paramount to first identify the range or circumference of the consuming class of such product, and measure the distinctiveness of the trademark only within such range or circumference. [See: para 37 of Sugarfree-I] 5) ...a good reason to assume that the trade mark "Sugar Free" has acquired a considerable degree of dist .....

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of the defendant's Pro Biotic Frozen Dessert and, thus, may be gravitated to purchase the defendant's product. [See: para 48 of Sugarfree-I] 7) ...though the petitioner has prima facie been successful in establishing the distinctiveness of its trade mark "Sugar Free" in relation to its products, it has not been able to satisfy this Court why an embargo should be placed on the defendant from absolutely using the expression 'Sugar Free', especially when the defendant has .....

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duct, restrained the defendant from using the expression "Sugar Free" in the present font size which was conspicuously bigger than its trade mark 'Amul'. 10. Since the plaintiff's claim in respect of the expression "Sugar Free" has been examined threadbare in Sugarfree-I, it is neither necessary nor appropriate for me to have a relook. There is no need to reinvent the wheel, as it were. From Sugarfree-I, it is apparent that the prima facie view is that the express .....

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that, while the considerable degree of distinctiveness of "Sugar Free" in relation to the plaintiff's products was prima facie recognized, the court also took the view that no embargo could be placed on the defendant from absolutely using the expression "Sugar Free", particularly in a descriptive sense. 11. It has been contended on the part of the defendant that the expression "Sugar Free" is in public domain and cannot be appropriated exclusively by the plaint .....

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the expression "Sugar Free" is generic. However, in Sugarfree-I, it has been observed that "Sugar Free" in relation to sweeteners has attained a certain degree of distinctiveness referring to the plaintiff's products. That, of course, is a prima facie conclusion and is subject to the final decision in the suit. However, assuming that conclusion to be valid for the purposes of the present case also, it must be reiterated that the "considerable degree of distinctivenes .....

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o whether the plaintiff can at all claim "Sugar Free" as a trademark, which question would have to be conclusively determined in the suit. The learned Single Judge in the above quoted decision of Shree Baidyanath Ayurved Bhawan Pvt. Ltd, noticed that while a considerable degree of distinctiveness in relation to the appellant s artificial sweetener was prima facie recognized by the learned Single Judge in the case of Sugar Free-I, nevertheless, the distinctiveness acquired qua the artif .....

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rely descriptive sense. 14. In consonance with the above view we are also not in a position to agree with the appellant that the word Sugar Free has become so distinctive of the sugar substitute and has acquired such a secondary meaning in the sugar substitute market that it cannot refer to any other food product except the appellant s sugar substituted product labelled Sugar Free . There cannot be any doubt that the word sugar Free is not inherently distinctive and is clearly descriptive in nat .....

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respect of any product beyond its range of products and the respondent cannot be restrained from absolutely using the expression Sugar Free , particularly in the descriptive sense. A mere descriptive usage of the expression Sugar Free by the respondent may thus blunt the edge of claim of distinctiveness by the appellant. However, we make it clear that if any party enters into the domain of artificial sweeteners with the trademark Sugar Free the appellant may have a just cause in seeking restrai .....

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ied in imposing the restrictions. In view of the findings recorded in the judgment about the descriptive nature of the phrase Sugar Free , we cannot restrict the use of the expression Sugar Free by the respondents especially as the part of a sentence or a catchy legend so as to describe the characteristic features of its product. The learned Single Judge, on the nature of lettering, has observed at the interlocutory stage that the respondents are exhibiting the expression Sugar Free in a manner .....

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