The protection and assertion of IP rights is perhaps as important is its acquisition. While there has been a spurt in the number of trademark registrations, infringement has also been on the rise. A recent decision of the High Court of Delhi in Cadila Healthcare Ltd v. Diat Foods (India) FAO (OS) No. 385/2008 highlights yet another attempt by a company to safeguard its brand.

The appellant, Cadila Healthcare, had originally introduced an artificial sweetener under the brand name Sugar Free. The respondent, Diat Foods, [hereinafter then introduced ‘Sugar Free Cookies’ with emphasis on the words Sugar Free on the label. Aggrieved, the appellant sought to enjoin the respondent from unauthorized use or infringement of the words sugar free.

An ad interim ex-parte order was granted in the year 2008, restraining the respondent from using the mark ‘SUGAR FREE’. However, the respondent entered appearance and contested the suit for injunction. The application was then dismissed with costs. The appellant subsequently filed the instant appeal.

Cadila had filed numerous suits in the past attempting to claim exclusive use of the mark Sugar Free. However, they observed that in some cases, the court ruled that while the expression Sugar Free may lead to some confusion, it is less likely to manifest, owing to the well-informed consumer base. In some other cases, the court opined that use of the expression was not carried out in a manner as to lead the public to perceive it as a product belonging to the appellant. Further the mark Sugar Free cannot be said to be a coined word as it is merely a combination of two popular words. Thus the expression is inherently incapable of becoming distinctive in relation to all products.

The High Court sought to ensure that the use of the rather generic expression Sugar Free is with appropriate restrictions, to prevent any deception. It achieved this by ruling that the expressions used on the respondents product, including the phrase Sugar Free must be used in equal prominence, although different fonts may be used. Ultimately, the court held that there would be no restraint to use the expression, subject to the aforementioned rider. It also set aside the costs granted in the impugned judgment.