Establishing 'distinctiveness' of coined words is tackled by Courts on a case-to case basis. While it is true that trademarks with unusual combinations or combination of words have traditionally enjoyed a higher degree of protection under the trademark law of India, the line between the 'usual' and the 'unusual' is getting thinner by the time.

Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors' 2009 (41) PTC 336 (Del.) (DB) is a judgment of the Delhi high Court that deals with the issue of adjudicating the distinctiveness of a trademark when it is prima facie, 'descriptive' in character. In the case Cadila Healthcare Ltd. launched a product containing 'aspartame', a sugar substitute, under the brand name 'Sugar Free' in the year 1988. Cadila had allegedly coined and adopted the trademark 'Sugar Free' and were the first user of the said trademark in India. Gujarat Co-operative adopted a mark consisting of the words 'Sugar Free' for their frozen dessert, identical with and deceptively similar to the Cadila's trademark. The Gujarat Co-operative however, admittedly, were not selling their products under the name 'Sugar Free', but using the same as a descriptive adjective for their product. Cadila filed a suit before the learned Single Judge seeking a decree of permanent injunction for restraining Gujarat Co-operative from using in any manner, particularly in relation to their products, the expression 'Sugar Free', which Cadila claimed had acquired exclusivity as a trademark in relation to its various products. The application for injunction was dismissed by the learned Single Judge, against which the present appeal was filed.

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, clearly establishing a superior interest. The claim of exclusivity relied upon the term 'Sugar Free' being a coined word. The counsel for the appellant 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. The Court found it difficult to agree with Cadila that the term 'Sugar Free' was a coined word. In its own words,

"At best, the mark is a combination of two popular English words. Once a common phrase in the English language which directly describes the product is adopted by a business enterprise, such adoption naturally entails the risk that others in the field would also be entitled to use such phrases provided no attempt is made to ride on the band wagon of the appellant's indubitably market leading product 'Sugar Free'. In this connection, merely because the attributes of 'sugar free' can be described by other phrases cannot detract from the common usage of the phrase 'Sugar Free' as denoting products which do not contain sugar and any trader which adopts such mark in the market place, does so with the clear knowledge of the possibility of other traders also using the said mark. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9,30 and 35 of the Trademarks Act, 1999."

Thus, while refusing to accept that 'Sugar Free' is a coined term having unusual connotation, the Court set itself to ascertain the alleged 'distinctiveness' by looking into the range/circumference of the consuming class of the product. 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 not as a trademark but in its descriptive or laudatory sense.

In view of the above opinion, the Court refused to grant an injunction on the use of the said mark by Gujarat Co-operative as a part of sentence or catchy legend so as to describe the nature of their product. They were however, required to reduce the font size of the said term, which conspicuously stood bigger than the trademark of the product.

© Lex Orbis 2009

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.