1.A. No. 3847/2007

G.S. Sistani, J.- The plaintiff has filed the present suit, seeking, inter alia, a decree of permanent injunction for restraining the defendants from using in any manner, particularly in relation to their products, viz., frozen desserts and choc minis, the expression Sugar Free, which, the plaintiff claims has acquired exclusivity as a trade mark in relation to the various products manufactured by it. The said relief is being sought in order to prevent the defendants from passing off their products as those of the plaintiff as well as for rendition of accounts and damages.

2. Pending disposal of the present suit, the plaintiff filed an application being I.A. No. 3847/2007 under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter, CPC) for seeking interim relief. This Court vide order dated 3.4.2007 granted an ex parte ad interim injunction against the defendants. Pursuant thereto, defendant Nos. 1 and 2 filed an appeal being F.A.O. (O.S.) No. 113/2007 for setting aside the ex parte order dated 3.4.2007. A Division Bench of this Court vide order dated 4.5.2007 directed that the appeal being F.A.O. (O.S.) No. 113/2007 shall be considered as an application under Order 39 Rule 4 of the CPC for vacation of the ex parte order dated 3.4.2007.

3. Accordingly, two applications have come up for disposal before this Court - one under Order 39 Rules 1 and 2 read with Section 151 of the CPC seeking temporary injunction, and the other under Order 39 Rule 4 of the CPC seeking vacation of the ex parte order dated 3.4.2007. I shall dispose of both these applications together as both of them are inter-linked and the fate of one shall invariably decide the fate of the other.

4. First and foremost, it is essential to place on record a few incontrovertible facts which have led to the present applications and will provide us with a necessary prelude to effectively appreciate the substantive and technical aspects involved herein.

5. The plaintiff is engaged in the field of manufacturing and marketing of pharmaceuticals, medicinal preparations and health care products.

The defendant No.1 (hereinafter, the defendant), on the other hand, is engaged in the manufacturing, selling and marketing of various dairy products. The plaintiff and defendant have locked horns on the use of the expression Sugar Free which apparently both parties are using in relation to their respective products. Whilst the plaintiff claims to be using the expression Sugar Free as a trade mark in relation to its products, the defendant states to be using the said expression only in its descriptive sense to convey the special attributes of its product, namely, Pro Biotic Frozen Dessert.

6. The case, as set out by the plaintiff, is that the trade mark Sugar Free was adopted in the year 1988 by the predecessor of the plaintiff company, namely, the Cadila Group, to launch a sugar substitute containing Aspartame, which is an artificial sweetener containing only 2% of the calories of sugar. Pursuant to the restructuring of the Cadila Group in the year 1995, part of its business along with its goodwill and the trade mark Sugar Free were transferred to the plaintiff. The recent years have seen the plaintiff capitalising the trade mark Sugar Free as an umbrella trade mark in relation to its various products, viz., Sugar Free Natura, Sugar Free Gold and Sugar Free Dlite. Sugar Free Natura, for instance, is a sugar substitute containing sucralose, which is a zero calorie artificial sweetener developed through a multi-step high technology manufacturing process.

7. The tablet dispensary container of Sugar Free is stated to have obtained registration under the Designs Act, 1911. It is further submitted by the plaintiff that it has already been successful in securing registration of the trade mark Sugar Free in Russia and has also applied for registration in respect of the said trade mark in Myanmar. However, admittedly, none of the tr