High Court of Delhi was dealing with petition filed under Order XXXIX Rules 1 and 2 CPC seeking permanent injunction, restraining the defendant from infringing their registered trademarks and seeking protection against disparagement, dilution and tarnishment of trademarks, damage to reputation and tarnishment of brand equity and damages.
Brief Facts:
The present case has been 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 claim that they had acquired immense reputation and goodwill in relation to ‘Rooh Afza’. The plaintiffs have also set out in detail, the years since when the trademark ‘Rooh Afza’ in relation to these products had been registered. The product of the plaintiffs sold under the trademark ‘Rooh Afza’ in bottles, has a unique colour combination, layout, get-up and arrangement of features, particularly, a unique and distinct floral arrangement. The 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 seems 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 claim that it was due to oversight that this application could not be opposed by the plaintiffs and therefore, the defendant has been granted registrations in respect of the mark ‘Sharbat Dil Afza’.
Plaintiff’s Contention:
The counsel for the plaintiff submitted that the defendant had been using its trademark for medicines, whereas, in 2018, it had sought registration in Class-5 claiming to have been in use of the said trademark for medicines since 1949. However, the drugs licence had been obtained only in 1976, whereas the plaintiffs have been producing and marketing their product/sharbat under the name ‘Rooh Afza’ since 1907 and had obtained the first registration of its trademark in 1942. Learned counsel has relied on several judgments/orders to submit that the plaintiffs have established a case for interim protection.
Learned counsel for the plaintiffs in rejoinder has reiterated that the plaintiffs’ trademark ‘Rooh Afza’ has obtained a secondary meaning having built its reputation over a hundred years. It was further submitted that obtaining a drug licence was not sufficient to prove use, and no document had been produced by the defendant despite opportunity to show that the word ‘Dil Afza’ had been in use since 1949. It was argued that it was by deceptions that the trademark got registered as no proof of use had been submitted to the Registrar. For that reason, the registration was itself invalid and the defendant could not claim any benefit under Section 28 of the Act.
Defendant’s Contention:
Learned Counsel for the defendant submitted that since both the marks were registered, the suit for infringement did not lie in view of the provisions of Section 29 of the Trade Marks Act, 1999. Further, it was submitted that the word ‘Afza’ has become common to the trade of sharbat and there are many players in the sharbat market who are using ‘Afza’.
It was submitted that ‘Dil Afza’ had been in use since 1949 in Class-5. ‘Rooh Afza’ was also being used in Class-5. Since 1949 till 2020, clearly no confusion had arisen. Therefore, the adoption of ‘Dil Afza’ for syrups and sharbats by the defendant was not mala fide and was not intended for creating confusion. It was submitted that the defendant had its own reputation built over a long period of time and as such, there was no requirement for the defendant to adopt a deceptive trademark to benefit from the reputation of the plaintiffs.
It was contended that the word ‘Afza’ had a distinct dictionary meaning, namely “increasing; adding”. It was also submitted that the plaintiffs had not obtained separate registrations for ‘Rooh’ and ‘Afza’ and the registration was for the label in entirety i.e., ‘Rooh Afza’. Similarly, the defendant had got the registration for the entire label/trademark of ‘Dil Afza’ and also could not have got the words ‘Dil’ or ‘Afza’ individually registered. It was submitted that since ‘Afza’ was a word that was not distinctive and there was a great difference between the words ‘Dil’ and ‘Rooh’, one meaning ‘heart’ and the other ‘spirit’, no class of consumers would be misled into believing that the product of the defendant was somehow connected to that of the plaintiffs.
HC’s Observations And Held:
The question before the Court were whether the registration of the defendant’s trademark is valid. Whether the Court could issue any directions under Section 124(5) of the Trade Marks Act, 1999. whether the use of the defendant’s trademark for similar products would result in confusion.
Court stated that the contention of the learned counsel for the defendant that the trademark of the plaintiffs, namely, ‘Rooh Afza’ is not a well-known mark, cannot be accepted. Court also stated that even 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.
Court observed that the defendant’s sharbat is called ‘Dil Afza’. Thus, there is no identical mark that has been used. The similarity is sought on the ground that ‘Dil’ and ‘Rooh’ entail deep emotions and that the word ‘Afza’ is common to both. Court stated that 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. 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’. There cannot be a confusion being created on account of the meaning of the two words.
Court observed that the plaintiffs do not state that they had applied for and obtained registration for the exclusive use of the word ‘Afza’. Thus, it is 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.
Court stated that in Class-5, relating to Unani/Ayurvedic medicines, the defendant has 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’.
HC dismissed the application.
Bench: Hon'ble Ms. Justice Asha Menon
Case Title: Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Ltd.
Case Details: CS (COMM) 551/2020
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