The Delhi High Court & the IP Owner Waltz: The Curious Case of the 'Sugar Free' Trade Mark

A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.

- Godfrey Philips Indi Ltd. Vs. Girnar Food and Beverages (P) Ltd., 2005 (30) PTC 1

The Delhi High Court has established a reputation for being notoriously 'pro-ip' and for relegating precedent's on the grant of interim injunctions to the dustbin of history's forgotten ideas. Even within this milieu, the interim order in Zydus Cadilla v. Gujarat Cooperative Milk Marketing Federation (IA No. 3851/2007) is shocking. The Court has relied on the above quoted statement of the Supreme Court of India in Godfrey Philips, to determine that the plaintiff is entitled to an injunction against the defendant's use of the words "Sugar Free" on its diet chocolates.

While an attempt to comprehensively critique the order may well result in a textbook on trade mark law, here are some thoughts:

1. The trade mark "Sugar Free" is inherently incapable of being an 'indication of origin" in respect of artificial sweeteners and thereby cannot be a trade mark. Further it is (a) it is generic and (b) it is descriptive.

2. Even if one were to assume that the term "Sugar Free", by virtue of 'extensive and exclusive' use, is entitled to protection as a trade mark in respect of artificial sweeteners, the band within which such protection exists is narrow. It does not and cannot be extended to any other 'diet' products.

These are reasons rooted in trade mark law, and perhaps it can be determined by a Court only after an 'exhaustive' study of the law and of facts. What is worrying, as a matter of process, is the 'eagerness' to grant ad exparte interim injunctions - with nay regard to facts, marks and law. A jurisprudence resulting in the ipso facto grant of an interim injunction - exparte, on the payment of court fees - in all matters of IP - appears to be the shameful result of an intense and concentrated lobbying effort on the part of many companies and the lack of a mature legal market.

Till the same is effectively countered or a mature market emerges, "Sugar Free" may not be safely used on diet chocolates, diet soft drinks or even in respect of blogs - lest the Plaintiff apprehend irreparable damage.

Disclaimer: This blog is not SUGAR FREE.