'Rooh Afza' Trademark Has Acquired Immense Goodwill, Requires High Degree Of Protection: Delhi High Court In Suit Against 'Dil Afza' Sharbat

The Delhi High Court on Wednesday observed that the mark "Rooh Afza" has acquired immense goodwill and has served as the "source identifier" for the sharbat being manufactured by Hamdard National Foundation (India) and Hamdard Dawakhana for over a century.

Observing that "Rooh Afza" mark requires a high degree of protection and it is essential to ensure that the competitors keep a safe distance from it, a division bench of Justice Vibhu Bakhru and Justice Amit Mahajan 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.

"Given the overall commercial impression, prima facie, we are of the view that the impugned trademark lacks sufficient degree of dissimilarity, which is required to protect the appellant's trademark," the bench said. 

The court made absolute an interim order passed by the single judge dated December 15, 2020 wherein the statement made on behalf of Sadar Laboratories Private Limited was recorded that it will not manufacture and sell syrups and beverages under the trademark "DIL AFZA."

"The said ad interim order is made absolute and shall continue till the disposal of the suit," the court said.

The bench was hearing an appeal moved by manufacturers of Rooh Afza against rejection of its application seeking an interim injunction against Sadar Laboratories Pvt. Ltd., for infringing its registered trademarks.

In the suit, the appellants had claimed 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 single judge had rejected the argument that the two competing marks were similar. The court had said buying a bottle of sharbat would not entail any deep emotion and in any event, the consumers would be able to distinguish between 'ROOH' and 'DIL'.

While refusing to pass an interim injunction, the single judge had directed the respondent to file a quarterly report in regard to its accounts till the disposal of the suit. The suit was also stayed in view of section 124(1)(b)(i) of the Trademarks Act.

While setting aside the impugned order, the division bench observed that when one examines the question as to whether the words "ROOH AFZ and "DIL AFZA" are similar, the fact that both the composite marks end with "AFZA" lends an element of similarity to both the marks.

"…this also acquires a higher significance since 'AFZA' is not a 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.

On the finding of the single judge that there could not be any confusion between the words ROOH and DIL, the court observed that when one considers that the literal meaning of the Urdu word "ROOH" in English language is "soul' and of "DIL" is heart', the connection becomes "clear at once."

"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," the court observed.

The bench also observed that the 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.

"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.

Observing that there is a similarity in the trade dress of the two products as they have same 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.

"The value of the product is another factor to be considered. The product is a consumable item and is a low-priced product. Thus, the attention that the customer may devote to the product on a shelf or on an online marketplace would, at best, be cursory. It is not expected that the average customer would deliberate on the details of the product as one would do while taking a high value investment decision," 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 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," the court observed.

Title: HAMDARD NATIONAL FOUNDATION (INDIA) & ANR v. SADAR LABORATORIES PVT LTD

Citation: 2022 LiveLaw (Del) 1204

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