This article on ‘Rooh Afza vs Dil Afza: Case Analysis‘ was written by Monika Yadav, an intern at Legal Upanishad.
In this article, we will be discussing an important case law related to trademark protection. “Hamdard” is a well-known name that manufactures a variety of items such as ayurvedic medicines, cough and other syrups including certain unani medicines also, etc. “Rooh Afza” is also a sweet beverage product manufactured by the Hamdard group of companies. This matter related to this same product arises a conflict upon the trademark conflict with a similar product named “Dil Afza”.
About the Rooh Afza vs Dil Afza case
The ad interim order granted by the Single Judge rejecting the infringement suit filed by the appellant-plaintiff and additionally requesting a permanent injunction forbidding Sadar Laboratories (the respondent) from utilizing the trademark “SHARBAT DIL AFZA,” and this was deceptively similar to the registered trademark of the plaintiffs “ROOH AFZA,” was declared unconstitutional by a Division Bench of Vibhu Bakhru and Amit Mahajan, JJ.
The appellant, who has been in the business of producing and selling a wide range of items for more than a century, including unani and ayurvedic medicinal products, oils, syrups, and non-alcoholic beverages, is additionally the holder of the trademarks “HAMDARD” as well as “ROOH AFZA,” which are applied to a wide range of goods and services provided by the Hamdard Company. The applicants argued that now the trademark “HAMDARD” had been accepted as a household mark of said Hamdard Group of companies, that it would be a well-known mark as defined by Section 2(zg) of said Trade Marks Act, 1999, and that it had become listed among those well-known marks.
- Is it appropriate to grant a permanent injunction preventing the respondent from violating the petitioner’s trademark protection?
- Is it possible to obtain protection from infringement, depreciation, and disparagement of trademarks as well as from reputational harm and financial loss?
- Does this Court grant any orders in accordance with Section 124(5) of said Trade Marks Act of 1999?
- Whether there would be ambiguity if the plaintiff’s trademark were used on comparable goods?
Statements made by the Appellants
The appellants’ legal counsel asserts that the name “ROOH AFZA” was a well-known mark with significant goodwill associated with sharbat. The appellants learned of the defendant’s introduction of its sharbat carrying the mark “DIL AFZA” in 2020 out of advertising in a daily paper. The appellants asserted that perhaps the trademarks “DIL AFZA” and “ROOH AFZA” were confusingly similar to one other. Additionally, the item’s packaging and design, especially the bottle that the defendant employed, was misleadingly similar to those of the appellants’ item.
Statements made by the respondent
The respondent asserted that since 1949, its unani medicines, including unani medicinal syrups and its syrups and beverages, have been sold under the aforementioned contested trademark. Additionally, it was asserted that the respondent combined the distinct words “DIL” and “AFZA” to create the trademark in question. Such words, which loosely relate to “heart” and “increasing”/”giver of plenty,” seem to be from the dictionary of the Urdu and English dialects. Because they own the combined mark “ROOH AFZA,” the applicants couldn’t even assert any monopoly rights over the term “AFZA.” There was no exclusive authority to utilize any component of the mark “ROOH AFZA” as a result of its licensing.
Moreover, the Court ruled that it was extremely pessimistic to assume that the usage of the terms “Dil” and “Rooh” would lead to misunderstandings since they imply strong emotions.
Analysis, legislation, and judgment
After carefully considering the evidence presented, the Single Judge came to the conclusion that the appellant’s assertion that they had established significant goodwill and reputation concerning the trademark “ROOH AFZA” cannot be disproved. Accordingly, it was decided that the applicants can only assert their exclusivity rights over the entire trademark “ROOH AFZA,” not just the two terms “ROOH” and “AFZA,” which made up the trademark.
The Court stated as this would not be hard to imagine that someone looking at the labeling of DIL AFZA may remember the name of ROOH AFZA because the word “AFZA” was prevalent and because the meanings of “ROOH” and “DIL,” when converted into English, were frequently used together. Additionally, it was stated that “the advertising appearance of the impugned trademark was confusingly similar to the appellant’s trademark and, at first glance, the appellant’s mark was indeed a solid mark, as well as the necessity of protection tends to vary correspondingly also with the strength of said mark; the better the mark, the greater the necessity to safeguard the same.”
The Court pointed out that the aforementioned photos make it obvious that such trade dress for the two items is comparable. This fact as both containers are clear and the colouring of the fluid is exactly the same, together with the fact as both items share the same dark red texture and colour, will surely add to the entire image of the item which any customer might remember.
In light of this, the Court decided that the appellant’s mark needed a significant amount of protection and concluded that it was crucial to make certain that the competitor stayed well away from the claimed mark. As a result, the Court overturned the Single Judge’s decision and declared that the prior interim injunction was final and therefore would stand until the case was resolved. The Court additionally ordered the respondents to cease manufacturing and selling any goods within Class 32 using the disputed trademark “DIL AFZA” until the lawsuit was resolved.
“Another aspect to take into account is the product’s price. The item is inexpensive and edible. As a result, the consumer’s focus on the goods displayed on the shelf or within an online store would at most be superficial. The typical consumer is not anticipated to carefully consider every aspect of the item as one might when making a high-value investment choice,” the court stated.
- Hamdard National Foundation (India) v. Sadar Laboratories Pvt. Ltd., 2022 SCC OnLine Del 4523, decided on 21-12-2022, https://indiankanoon.org/doc/11763122/
- [Rooh Afza vs Dil Afza] Delhi High Court restrains Sadar Laboratories from manufacturing or selling products containing trademark ‘DIL AFZA’ till final disposal, Available at: https://www-scconline-com.cdn.ampproject.org/v/s/www.scconline.com/post/2022/12/23/rooh-afza-v-dil-afza-delhi-high-court-restrains-sadar-laboratories-from-manufacturing-or-selling-products-containing-trademark-dil-afza-till-final-disposal/ (Accessed: January 25, 2023).
- Nupur Thapliyal, ‘Rooh Afza’ Trademark Has Acquired Immense Goodwill, Requires High Degree Of Protection: Delhi High Court In Suit Against ‘Dil Afza’ Sharbat, Available at: https://www-livelaw-in.cdn.ampproject.org/v/s/www.livelaw.in/amp/news-updates/rooh-afza-trademark-goodwill-delhi-high-court-suit-dil-afza-sharbat/ (Accessed: January 25, 2023).
- Hamdard National Foundation vs Sadar Laboratories Pvt Limited, Available at: https://www.jainandpartners.com/news/details/73 (Accessed: January 25, 2023).