JUDGMENT

Sanjay Kishan Kaul, J. The appellant filed a suit for permanent injunction restraining passing off of the trademark 'SUGAR FREE', its dilution, damages and rendition of accounts, delivery up, etc. The appellant claimed that in the year 1988, a low calorie table-top sweetener without natural sugar containing an artificial sweetener was introduced under the trademark 'SUGAR FREE'. This product contained 'Aspartame' which contains only 2% of its calories. The applications filed for registration of the trademark were pending. The sales have been large and from 1988 onwards, around Rs.216.40 crores sales have occurred.

2. The appellant alleged that the respondent had introduced 'Sugar Free Cookies' with 'SUGAR FREE' written in big size fonts in bright red colour. It is this 'SUGAR FREE', which has been emphasized while 'Cookies' is written in a small running font size in a pale brown colour so as to make it almost unreadable. The respondent is stated to have filed an application for registration of the trademark 'SUGARLESS' and/or 'SUGARLESS Bliss'. The packaging of the respondent also states that the product had been 'Sweetened with Splenda Brand'. The 'Splenda Brand' is actually a competitor of the 'SUGAR FREE' product of the appellant. This 'Splenda' is also written in small letters.

3. The appellant along with the suit filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 ( hereinafter to be referred to as, 'the said Code' ) and ad interim ex-parte order was granted on 05.02.2008 restraining the respondent from using the trademark 'SUGAR FREE' as a brand-name or any other mark, which is identical or deceptively similar to the appellant's mark.

4. The respondent entered appearance and contested the suit and the injunction application. The application for interim injunction has been dismissed with costs vide the impugned order dated 09.07.2008, which has been assailed in the present appeal.

5. We may state at this stage that the appellant has initiated more than one proceeding against different parties arising from its claim of exclusive right to use the trademark 'SUGAR FREE'.

6. In Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors., 2008(36) PTC 168, learned Single Judge of this Court examined the aspect of the claim for exclusive use of the trademark 'SUGAR FREE'. The defendant in that suit while packaging its product, namely, 'Pro Biotic Frozen Dessert' had used the expression 'SUGAR FREE'. The appellant as plaintiff alleged that the expression 'SUGAR FREE' had been used on the packaging not in a descriptive sense, but as part of the defendant's trademark 'Amul'. The font size adopted for the expression 'SUGAR FREE' on the packaging of the defendant was alleged to be likely to mislead potential customers into believing that the product being 'Pro Biotic Frozen Dessert' is related to the appellant/plaintiff 'SUGAR FREE' range of products.

7. Learned Single Judge found that the material placed on record prima facie established the popularity of the 'SUGAR FREE' range of products amongst the traders and consumers giving a good reason for the Court to assume that the trademark 'SUGAR FREE' had acquired a considerable degree of distinctiveness amongst traders and consumers. However, the acquisition of a secondary meaning by a trademark or the distinctiveness associated with it is not ipso facto conclusive of an action of passing off. The defendants were found to have used 'Amul' as trademark before the expression 'SUGAR FREE'. There was no perceptible similarity between the two different packaging, but what caught the attention of learned Single Judge was the manner in which the expression 'SUGAR FREE' had been displayed on the packaging of the defendant's product. Despite the fact that 'Amul' was the trademark of the defendant, it was written in comparatively much smaller font than the word 'SUGAR FREE', which was more conspicuous by their