On 6th January 2022, Hon’ble Delhi High Court dismissed an application plea filed by the plaintiff (Hamdard National Foundation) seeking an interim injunction against the defendant (Sadar Laboratories) on account of trademark conflict between two manufacturers dealing with sharbat under two different names. The petition was filed by a “popular Roof Afza” sharbat manufacturing company against another company, manufacturing identically similar sharbat under the brand “Dil Afza” to restrict it from marketing its sharbat.
The case was brought up by Hamdard National Foundation, manufacturer of “Rooh Afza” sharbat through Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Limited. The Plaintiff, Hamdard National Foundation and Hamdard Laboratories (hereafter referred to as ‘Hamdard’) are the Manufactures of the well-known syrup/sharbat sold under a registered trademark ‘Rooh Afza’. Whereas Defendant, Sadar Lab is a private company having their syrup/sharbat product named ‘Dil Afza’, which also possess a trademark registration in respect of their mark Sharbat Dil Afza’.
Through the present case, the plaintiff alleged that it had come to their knowledge that the defendants had launched a sharbat with a mark “Dil Afza” in a similar ringlet bottle as that of their product “Rooh Afza” in March 2020.
Considering the identically similar nature of the mark and as well as their market presence, Hamdard has filed a suit seeking a permanent injunction against Sadar Lab for trademark infringement and passing off.
ISSUES THAT LED TO THE LAWSUIT
1. Whether trademark rights of the plaintiff were infringed by the defendant?
2. Whether the use of the defendant’s trademark for similar products would create any confusion?
3. Whether the registration of the defendant’s trademark valid?
4. Applicability and scope of section 124 of the Trademarks Act,1999
CONTENTIONS OF COUNSELS
The contentions placed by learned counsel (S.P. Singh and Sunil Mishra, Advocates) were that the defendant had got their mark registered in 2018 whereas Hamdard has been producing and marketing their product ‘Rooh Afza’ since 1907 and had registered their trademark in 1942 only.
They further argued by saying that the plaintiff had built an enormous reputation and goodwill in respect to ‘Rooh Afza,’ with revenues of Rs.30983.57 lakhs in 2019-20 and Rs.16, 281.41 lakhs in 2020-21. (Till August 2020). The plaintiffs have expended significant promotional costs, as evidenced by their spending of Rs.459.10 lakhs in ads in 2019-20 and Rs. 577.89 lakhs in 2020-21, up to August 2020. Due to this, their trademark ‘Rooh Afza’ had obtained a secondary meaning in society by having built its reputation over a hundred years, however, the opponent company acquired their registration by mere deception as its evident through their inability in submitting any evidence to show that the word Dil Afza’ had been in use since 1949 and therefore registration has been challenged which is currently pending before registrar.
It was further contended that Injunctions were likely to be issued against the defendant. Because the defendant had been using its trademark for medicines, but in 2018, it requested registration in Class-5, stating that it had been using the brand for medicines since 1949.
The medicines license, however, was secured only in 1976, but the plaintiffs had been producing and marketing their product/sharbat under the name ‘Rooh Afza’ since 1907, much before the defendants with the first registration of its trademark in 1942.
The contentions placed by learned counsel (N.K. Kantawala and Prakhar Sharma, Advocates) were that since both marks (‘Rooh Afza’ and Sharbat Dil Afza’) were registered, the suit for the infringement no longer tenable as it’s outside the purview of Section 29 of the Trademark Act,1999.
The Counsel further contended that Dil Afza’ had been in use since 1949 in Class-5 so was the ‘Rooh Afza’, and no confusion had arisen till now and it clearly indicates that adoption of such name for syrups is no longer with any malafide intention. More significantly, the counsel further argued that registration for ‘Rooh Afza’ had been obtained as the label entirely and not as Rooh and Afza and the same is the case with their party as well.
The counsel also held that since the Word ‘Afza’ had no distinct meaning and the words Dil’ and ‘Rooh’ are connoting two different meanings, one as ‘Heart’ and another ‘Spirit’, there was no chance for confusion among the class of consumers. The counsel also reiterated that no objection was received during registration despite it being duly advertised and also added the delayed filing of this suit even though both parties were mutually present at many instances presuming the acknowledgement of their mark.
In the culmination of all the above contentions the counsel finally submitted that as per section 124 of the Trademarks Act,1999, the suit was liable to be stayed and therefore disqualified for any Interim Injunctions to be passed upon them.
The judgment was pronounced on 6th January 2022. The single bench of Justice Asha Menon rejected the application and passed a stay order on the suit filed by Hamdard National Foundation. The Bench pointed out that in the present case, the defendant’s sharbat is called ‘Dil Afza’ and therefore there was no identical mark that has been used. The similarity was sought on the ground that ‘Dil’ and ‘Rooh’ entail deep emotions and that the word ‘Afza’ is common to both.
According to the bench, even if the consumers were aesthetes, it would still be hard to believe that the use of the word ‘Rooh’ and ‘Dil’ would cause confusion because they connote deep emotion. Buying a bottle of sharbat may involve emotions, but not deep to the extent as described by the learned counsel for the plaintiffs. In any case, those who appreciate this deep emotion would be the first to be able to distinguish between ‘Rooh’ and ‘Dil’.
The Court opined that, while ‘Rooh Afza’, that is the complete word, may have acquired a secondary meaning, indicative of sharbat produced by the plaintiffs, ‘Afza’ by itself does not appear to be of that category. Also, to add the plaintiffs make no mention of applying for and receiving registration for the exclusive use of the term ‘Afza.’ Hence it was clear that the exclusivity claimed by the plaintiffs is with regard to the complete name ‘Rooh Afza’ and not with regard to two words separately that constitute the trademark i.e., to say that we cannot claim exclusivity for a trademark under a trademark.
Moreover, the same question for allowing interim injunction has been conclusively decided by the same Court in Clinique Laboratories LLC& Anr. vs Gufic Limited & Anrvi and held as follows:
“14. I thus conclude that a suit for infringement of a registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit while staying the further proceedings pending the decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court if the court is prima facie convinced of invalidity of registration of the defendant’s mark.”
However, the court has refused to pass any interim injunction and thereby disposed of the application with a directive to the defendant to keep a truthful account of sales of ‘Dil Afza’ syrup/sharbat during the pendency of the present suit and to submit to the court, a quarterly report and account, till the disposal of the suit.
From a primary reading of the recent judgment of Hon’ble court in the ongoing Rooh Afza vs Dil Afza Trademark dispute, it can be concluded that despite the court has rightly construed the ‘Well known’ nature of the Trademark Rooh Afza’ and rightly upheld the proposition of imposing a stay on a trademark infringement suit as per section 124 of Trademark Act,1999, the court’s ignorance to consider the deceptive similarity of the marks in dispute and resistance from granting an interim injunction over the suit despite the precedent on the same matter in issue is an indication of a Judicial error.
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