Aastha Thakur
Published on: 21 December, 2022 at 21:31 IST
In the ongoing battle of trademark infringement, Delhi HC held that the mark “Rooh Afza” has gain immense goodwill, becoming the “source identifier” for the brand of sharbat manufactured by Hamdard National Foundation (India) & Hamdard Dawakhana for over a century.
The court was dealing with the appeal filed by manufacturers of Rooh Afza against decision of single judge bench. The appellant alleges that use of marks like “SHARBAT DIL AFZA” or “DIL AFZA” are likely to cause confusion and amounted to infringement of its registered trademark “SHARBAT ROOH AFZA” or “ROOH AFZA.”
The plaintiff pleaded to provide interim injunction for infringing it’s trademark rights.
The bench of Justices Vibhu Bakhru & Amit Mahajan observing that “Rooh Afza” mark required protection from its competitors, restrained Sadar Laboratories Private Limited from manufacturing and selling any product under the trademark “DIL AFZA” till the disposal of the trademark infringement suit filed by the former.
“The said ad interim order is made absolute and shall continue till the disposal of the suit,” the court said.
However, the court also remarked that the impugned trademark lacks sufficient degree of dissimilarity, which is required to protect the appellant’s trademark.
The appellant counsel submits that the defendant use of marks “SHARBAT DIL AFZA” or “DIL AFZA” are likely to cause confusion and amounted to infringement of its registered trademark “SHARBAT ROOH AFZA” or “ROOH AFZA.”
The single judge had rejected the contention that two competing marks were similar. As there is no emotion involved in buying sharbat bottle, the consumers can easily distinguish one brand from another. The suit was also stayed in view of Section 124(1)(b)(i) of the Trademarks Act.
The division bench however, reviewed the words “ROOH AFZA” and “DIL AFZA” as composite marks where the word “AFZA” lends an element of similarity to both the marks.
“The word “AFZA” is not descriptive word of the product in question. But the use of the word ‘AFZA’, as a part of the impugned trademark, may not be dispositive of the question – whether the overall commercial impression of the impugned trademark is confusingly similar,” the court said.
As per literal interpretation of Urdu word ‘ROOH’ means here ‘soul’ and for ‘DIL’ is ‘heart’, generally used in conjunction whereas ‘AFZA’ is common in both marks.
Concluding that, “It is thus not difficult to conceive that a person who looks at the label of DIL AFZA may recall the label of ROOH AFZA as the word ‘AFZA’ is common and the meaning of the words ‘ROOH’ and ‘DIL’, when translated in English, are commonly used in conjunction,”
Further, the court added that, “The court observed that propensity for confusion on account of a similar meaning has to be understood in a wider sense and that it is not essential that the competing brands be synonymous.”
Regarding similarity in the trade dress of both products having deep red colour and texture, the court further said that the commercial impression of impugned trademark “Dil Afza” is deceptively similar to “Rooh Afza” trademark.
“Given that the chords of memory are also connected by association of ideas and subjects; a wider conceptual association between the meaning of the competing brands may be sufficient to add to consumer confusion,” the court said.
The court also noted that the trademark “ROOH AFZA” has been used in respect of the appellant’s product for over a century and thus, prima facie, it is a strong mark.
The court observed, “The two products – medicated syrups and beverages concentrate – cater to different markets. In any view, the reasoning that there is no likelihood of confusion as the competing marks had coexisted is, ex facie, erroneous as the same is based on use of the impugned trademark in respect of medicated syrups without examining the trade dress, the label, the size of packaging etc. of that product,”
Case Title: HAMDARD NATIONAL FOUNDATION (INDIA) & ANR v. SADAR LABORATORIES PVT LTD.