BADAR DURREZ AHMED, J

1. By way of this application, the plaintiff seeks an interim injunction restraining the defendant from using the expression “Sugar Free” on any of the defendant’s products. It is the contention of the plaintiff that by using the expression “Sugar Free” on its products, the defendant is passing off its goods as those of the plaintiff. The plaintiff seeks to restrain such alleged passing off on the part of the defendant by way of a permanent injunction in the suit.

.2. The plaintiff claims to be the owner of the trademark “SUGAR FREE” alongwith its variants “SUGAR FREE NATURA”, “SUGAR FREE GOLD” and “SUGAR FREE D’LITE”. According to the plaintiff, the mark “SUGAR FREE” was originally coined and adopted by its predecessor (Cadila Chemicals Limited) in respect of its sugar substitute. The product which was originally marketed under the mark “SUGAR FREE” contained aspartame – an artificial sweetener. Subsequently, the plaintiff developed another sugar substitute using sucralose and that product was marketed under the name “SUGAR FREE NATURA”. It is stated that the suffix ‘GOLD’ was added to “SUGAR FREE” to distinguish the new product, “SUGAR FREE NATURA” which contained sucralose, from the older product which contained aspartame. It is stated that the plaintiff also produces and markets a soft drink powder concentrate and soft drinks in various flavours under the brand name “SUGAR FREE D’LITE”. It has been further contended on behalf of the plaintiff that the sales turn over of the products selling under the said family of “SUGAR FREE” marks is more than Rs 50 crores annually. It is also contended that the plaintiff’s sugar substitute marketed under the mark “SUGAR FREE” has a market share in excess of 74% of the entire sugar substitute market in India. It is, therefore, contended on behalf of the plaintiff that the expression ‘Sugar Free’ has become inextricably associated with the plaintiff and its products and has acquired distinctiveness. It is also contended that though the said marks are not registered, applications in respect of the same are pending.

3. It was contended on behalf of the plaintiff that the defendant is manufacturing and marketing “CHYAWANPRAKASH”, a tonic, under the mark “SUGAR FREE”. Referring to the plaintiff’s product packaging and labeling, it has been contended that the expression “Sugar Free” appearing thereon is in large and prominent letters. It is the plaintiff’s case that the use of the expression “Sugar Free” by the defendant is not as a mere description of the characteristics of the product, but as a brand name in order to bring about a connection between the defendant’s product and the plaintiff’s goodwill. The defendant’s product packaging contains the following statements:-“Sweetener – Sorbitol & Sodium Saccharine Preservatives – Sodium Methyl Paraben & Propyl Paraben Flavour – Nature Identical No Added Sugar. Safe For Diabetics.”

4. It was contended that once the aforesaid statements had been made on the packaging, there was no necessity on the part of the defendant to prominently display the expression “Sugar Free” on the said packaging. The only conclusion, according to the plaintiff, is that the defendant has used the expression “Sugar Free” to create a link between its product and the plaintiff’s trademark and to ride on the popularity of the plaintiff’s said marks. It is on the basis of this that the plaintiff seeks an interim injunction restraining the defendant from using the expression “Sugar Free” in the prominent manner in which it has done. The defendant, on the other hand, contended that the plaintiff is not entitled to any injunction whatsoever.

.5. The photographs of the packaging of the defendant’s products are as under:-

.Front View Back View

6. The counsel on both sides referred to the following table with regard to distinctiveness of marks as appearing in Section 11.1 of Volume 2 of the Fourth Edition of McCarthy on Trademarks and Unfair Competition:-Fi

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