Delhi High Court: While addressing a trademark dispute between Rooh Afza and Dil Afza manufacturers, Asha Menon, J., expressed that, buying a bottle of sharbat may involve emotions, but not deep to the extent hoped for by the plaintiffs’ counsel (Rooh Afza manufacturers).
Factual Background
Plaintiff 1 is Hamdard National Foundation (India) and plaintiff 2 is Hamdard Dawakhana also trading as Hamdard Laboratories (India) which is a business held in trust, earlier trading as Hamdard Dawakhana. The Plaintiffs are engaged in the business of manufacturing and selling inter alia, Unani and Ayurvedic medicines, oils, syrups and non-alcoholic beverages for over 100 years.
Defendant company since the year 1949, was engaged in the business of manufacturing Unani medicines, syrups and botanical products.
Why was the present matter filed?
Present matter was filed on the ground that the defendant was not only infringing the well-known trademark of the plaintiffs in ‘Hamdard’ and ‘Rooh Afza’ but was also passing off its products as those of the plaintiffs by using the name ‘Dil Afza’.
The plaintiffs claimed that they had acquired immense reputation and goodwill in relation to ‘Rooh Afza’.
Further, it was claimed that the word ‘Rooh Afza’ was used in several products of the plaintiffs. The product/sharbat of the plaintiffs sold under the trademark ‘Rooh Afza’ in bottles, has a unique combination, layout, get-up and arrangement of features, particularly, a unique and distinct floral arrangement.
In March, 2020 plaintiffs came to know that the defendant had issued an advertisement launching its syrup/sharbat, bearing the mark ‘Dil Afza’ in deceptively similar ringlet bottles as that of the ‘Rooh Afza’ bottle.
The defendant had with mala fide intention, also adopted a deceptively similar mark, unique get-up, and design for its product. An application for registration of the mark ‘Sharbat Dil Afza’ in the name of the defendant seemed to have been filed on 10th June, 2018 on the basis of ‘proposed to be used’. Another application was filed on 4th July, 2018, claiming ‘user’ since 1949.
The plaintiffs claimed that it was due to oversight that the above application could not be opposed by the plaintiffs and therefore, the defendant had been granted registrations in respect of the mark ‘Sharbat Dil Afza’.
Analysis and Discussion
High Court noted that the mark of the plaintiffs and the mark of the defendant were both registered.
Under Section 28 of the Trade Marks Act, 1999, a validly registered trademark gives to the registered proprietor the exclusive right to use that trademark, except that where two persons are registered proprietors of trademarks that are identical or nearly resemble each other, their exclusive right to use any of those trademarks cannot be enforced against each other.
Whether this Court issue any directions under Section 124(5) of the Trade Marks Act, 1999?
Whether the use of defendant’s trademark for similar products would result in confusion?
Court denied accepting the contention of the defendant’s counsel that the trademark of the plaintiffs namely ‘Rooh Afza’ was not a well-known mark, cannot be accepted in view of the observations of the Lahore High Court in Unani Dawakhana v. Hamdard, 1930 SCC OnLine Lah 300.
On a prima facie view, the plaintiffs’ claim of having built a vast reputation and goodwill in respect of their trademark ‘Rooh Afza’, cannot be rejected.
Determination of Confusion
The standard to be adopted while determining confusion arising in the mind is of a consumer of imperfect memory or recollection and of ordinary sensibilities. It would be taking an extreme position, even if the consumers were connoisseurs, 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 hoped for 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’.
In Court’s opinion there cannot be any confusion with regard to the use of words, ‘Dil’ and ‘Rooh’ as they do not denote the same thing.
Word ‘Afza’
Bench referred to the decision of this Court in Cadila Laboratories Ltd. v. Dabur India Ltd., 1997 SCC OnLine Del 360 and Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738
Plaintiffs in the present matter do not state that they had applied for and obtained registration for the exclusive use of the word ‘Afza’. Hence it was clear that the exclusivity that the plaintiffs can claim is to the complete name ‘Rooh Afza’ and not to either of the two words that constitute the trademark.
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.
Whether the simultaneous use of ‘Dil Afza’ would prejudice the plaintiffs’ business?
In Class-5, relating to Unani/Ayurvedic medicines, the defendant had been using ‘Dil Afza’. Even if it is considered to have been in the market only since 1976, even then, for such a long time in the field of a more sensitive market of medicine, apparently, there has been peaceful co-existence with no confusion arising in the minds of the consumers.
Even if the sharbat has been produced only since 2020, no case has been made out to restrain the defendant from marketing its sharbat under the name ‘Dil Afza’.
Decision
In view of the above discussion, the application was dismissed with a direction to the defendant to maintain a true 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.
High Court in light of Section 124(1)(b)(i) of the Trade Marks Act, 1999, the suit is stayed pending the final disposal of the rectification application filed by the plaintiffs. Conclusion of those proceedings, either side may move an application for listing of the suit before the court. [Hamdard National Foundation (India), Sadar Laboratories (P) Ltd., 2022 SCC OnLine Del 39, decided on 6-1-2022]
Advocates before the Court:
For the Plaintiffs:
S.P. Singh and Sunil Mishra, Advocates
For the Defendant:
N.K. Kantawala and Prakhar Sharma, Advocates