2009 (9) TMI 1025 - HC - Indian Laws

Summary

Issues Involved:
1. Whether the appellant's trademark "Sugar Free" is descriptive or suggestive.
2. Whether "Sugar Free" has acquired distinctiveness and secondary meaning.
3. Whether the respondent's use of "Sugar Free" constitutes passing off.
4. Whether the size and prominence of the term "Sugar Free" used by the respondent is appropriate.
5. Whether the appellant is entitled to an injunction against the respondent's use of "Sugar Free".

Issue-wise Detailed Analysis:

1. Descriptive or Suggestive Nature of "Sugar Free":
The appellant argued that "Sugar Free" is a coined term and merely suggestive, not descriptive. They contended that the term is an ungrammatical combination of two English words and does not directly describe the product, which is an artificial sweetener. The appellant cited various legal precedents and dictionaries to support their claim that "Sugar Free" is not a generic term. Conversely, the respondent argued that "Sugar Free" is inherently descriptive, indicating a product without sugar, and is commonly used in the trade to describe such products. The court concluded that "Sugar Free" is not a coined word but a combination of two common English words, inherently descriptive of products that do not contain sugar.

2. Distinctiveness and Secondary Meaning:
The appellant claimed that "Sugar Free" had acquired distinctiveness and secondary meaning through long and exclusive use since 1988, achieving a considerable market share and consumer recognition. They argued that this distinctiveness entitled them to protection against others using the term. The respondent countered that even if "Sugar Free" had acquired some distinctiveness, it was limited to the specific product (artificial sweeteners) and could not be extended to all food products. The court found that while "Sugar Free" may have acquired distinctiveness in relation to the appellant's artificial sweeteners, this did not extend to all food products, and the term remained descriptive in nature.

3. Passing Off:
The appellant alleged that the respondent's use of "Sugar Free" constituted passing off, arguing that consumers might be misled into believing there was a connection between the respondent's products and the appellant's. The respondent contended that their use of "Sugar Free" was merely descriptive and not intended to mislead consumers. The court held that the use of "Sugar Free" by the respondent was in a descriptive sense and did not amount to passing off, as there was no evidence of misrepresentation or likelihood of confusion among consumers.

4. Size and Prominence of "Sugar Free":
The appellant argued that the respondent's use of "Sugar Free" in a font size more prominent than their trademark "Amul" was inappropriate and misleading. The respondent maintained that the font size was not inappropriate and merely emphasized the product's unique selling point. The court found that the respondent's use of "Sugar Free" in a conspicuously larger font was inappropriate and restrained the respondent from using the term in the current font size, which overshadowed their trademark "Amul."

5. Injunction Against Use of "Sugar Free":
The appellant sought a permanent injunction to restrain the respondent from using "Sugar Free" in any form. The court concluded that while the appellant's trademark "Sugar Free" had acquired distinctiveness in relation to artificial sweeteners, it did not warrant a blanket injunction against the respondent's descriptive use of the term. The court allowed the respondent to use "Sugar Free" descriptively but imposed restrictions on the font size to prevent misleading consumers.

Conclusion:
The court dismissed both the appeal and the cross objections, affirming that "Sugar Free" is a descriptive term that has acquired some distinctiveness in relation to the appellant's artificial sweeteners but does not extend to all food products. The respondent's use of "Sugar Free" was found to be descriptive and not constituting passing off, with restrictions imposed on the font size to prevent consumer confusion. The appellant's remedy for any grievances regarding the use of the term would be through a contempt petition, which was noted to be pending.