Raunaq Kwatra

BA LLB 2017 Section E

Word Count – 1256 Words

The Curious Case of the “Sugar Free” Litigation

Descriptive trademarks have often been a bone of contention in intellectual property law.
These marks “merely describe” some aspect of the good or service in question and are
generally not afforded trademark protection however, there is one exception to this norm -
descriptive terms can become protectable marks only if they acquire “secondary meaning.”
This occurs when the term, through use over time, begins to act as a source identifier for the
mark-holder in the mind of the consumer. This paper will focus on the decision of the
Hon’ble Delhi High Court in Cadila Healthcare Ltd. vs. Gujarat Co-operative Milk
Marketing Federation Ltd. and Ors., relating to the dispute regarding the use of the term
‘Sugar Free’.

Cadila Healthcare Ltd. had launched the product ‘Sugar Free’ containing ‘aspartame’, which
is a protein derivative and a substitute for sugar, in the year 1988. The product under the
trademark ‘Sugar Free’ was originally coined and adopted by Cadila Chemicals Ltd. In 1997,
certain assets of Cadila Chemicals Ltd including the trademark ‘Sugar Free’ were transferred
to Cadila Healthcare Ltd. and therefore the latter became the owner of the trademark in
dispute. The respondents, the Gujarat Co-operative Milk Marketing Federation Ltd. also
adopted the term ‘Sugar Free’ for marketing their frozen dessert, leading to the dispute in
question. The Single Judge Bench of Delhi High Court refused to grant an injunction to
Cadila Healthcare Ltd even after coming to the conclusion that its Trade Mark ‘Sugar Free’
had acquired a considerable degree of distinctiveness amongst the traders and consumers of
the product and acknowledging that the Trade Mark had achieved a secondary meaning only
with respect to the sugar substitute and not other products, opining that the term “Sugar Free”
is inherently descriptive in nature and has become publicis juris in relation to food and
beverages. It was also observed that there may be a possibility that such a consumer may be
led into believing that the appellant’s product is an ingredient of the respondent’s frozen
dessert and thus, the defendant – Amul, was restrained from using the expression ‘Sugar-free’
in the large font size in which it was conspicuously bigger than its trade mark ‘Amul’. The
defendant was allowed to use the expression ‘Sugar-free’ as part of a sentence or as a catchy
legend, so as to describe the characteristic feature of its product.1

This order was appealed against by Cadila Healthcare Ltd. The expression ‘Sugar Free’ is
commonly used to denote that a particular food article does not contain sugar and/or has been
sweetened by using sugar substitutes/artificial sweeteners. This implies that the term is
inherently generic for the class of products that are made without using sugar, rather that are
made using sugar substitutes which are less harmful for the human body. However, in ‘Sugar
free-I’ (the instant case when it was decided by the learned Single Judge), it was observed
that ‘Sugar Free’ in relation to sweeteners has attained a certain degree of distinctiveness
referring to the plaintiff’s products. The test of “considerable degree of distinctiveness” is
related only with the artificial sweeteners/sugar substitutes and is limited to such products.
‘Sugar Free’, prima facie, has not attained any distinctiveness outside the field of sugar
substitutes/artificial sweeteners. Therefore, in the instant case the plaintiff was not entitled to
appropriate a monopoly in the expression ‘Sugar Free’ in respect of any field of activity
beyond its range of artificial sweeteners. The primary issue before the appellate Court was to
adjudge whether the appellant had indeed acquired exclusivity over the use of the mark
'Sugar Free' in relation to their products. It may be mentioned here that the appellant had a
74% share in the sugar substitute market in India. It was argued that before the use of the
term by Cadila, there was no factual history to show that it had ever been used as a mark in
Indian markets. So, while the primary meaning of the term might be descriptive, its
secondary meaning has come to be associated with the appellant. In the Court's opinion, there
was established a considerable distinctiveness of Cadila's mark among traders, medical
practitioners and the affluent class of India. While it may be accepted that Cadilla had been
successful in establishing distinctiveness of its trademark in respect of a select class of
people, it still could not prove why an embargo should be placed on the defendant from
absolutely using the same expression. This is due to the fact that while secondary meaning
was established it was limited to a select range of consumers and could not be afforded
blanket protection.

The real issue here is, despite fulfillment of the requirement to satisfy the exception, the fact
remains that outside of the specific class of products where secondary meaning was
established, usage of the expression “Sugar Free” has larger implications. While establishing
1
2009 (41) PTC 336 (Del.) (DB)
'distinctiveness' of coined words is tackled by Courts on a case-to case basis, trademarks with
unusual combinations or combination of words still stand on shaky ground as the
implications of these terms and their usage expands and reaches far beyond the class of
products the mark pertains to. It was later also held in The Himalaya Drug Company Vs. M/s
S. B. L. Ltd. that “nobody can claim exclusive right to use any generic word, abbreviation, or
acronym which has become public jurisdiction. In the trade of drugs, it is common practice to
name a drug by the name of the organ or ailment which it treats or the main ingredient of the
drug. Such an organ ailment or ingredient being public jurisdiction or generic cannot be
owned by anyone for use as a trademark”2 If we look back at the Sugar Free case in light of
this decision, it may be argued that the decision itself stands on questionable ground as the
term “Sugar Free” clearly is a combination of generic words that, while it accrued secondary
meaning in a specific context, it still is misleading in a larger sense especially considering the
nature and industry this mark pertains to.

Section 9(1) of The Trade Marks Act, 1999 lays down the law related to the absolute grounds
for refusal of registration and provides that trademarks devoid of distinctiveness or those
which are solely indicative of the kind or the quality of the goods or services or the
trademarks which consist of words customary in the current language shall not be registered.
The statute is abundantly clear in respect of the matter that the mark or indication which
serves to designate the quality of the goods would be an absolute ground for refusal of
registration of a mark unless it has acquired a distinctive character. While “Sugar Free” as an
individual product has gained that secondary meaning, just like the term “Xerox” or
“Escalator”, its secondary meaning is not enough to set it apart from competing products in
the same category or industry. Further, Section 6(d) of the Trade Marks Act 1940, also
provided that the marks having direct reference to the character or quality of the goods shall
not be registered. The legislative intent behind these provisions, when read together, is
abundantly clear. Even a valid trademark can become generic if the consuming public
misuses the mark sufficiently for the it to become the generic name for the product or class of
products and in such scenarios it would be wholly unjust to allow a monopoly on such terms.

2
[2013 (53) PTC 1 (Del.) (DB)]