‘ROOH AFZA’ vs. ‘DIL AFZA’

The manufactures of ‘ROOH AFZA’ being Hamdard National Foundation (India) & Hamdard Laboratories (India) (hereinafter ‘appellants’) filed an appeal against the order dated 6.01.2022 of the Ld. Single Judge of the Delhi High Court (hereinafter ‘Impugned Order[1]’), whereby the appellants’ application seeking an interim injunction against Sardar Laboratories Pvt. Ltd. (hereinafter ‘respondent’) from using the trademark ‘SHARBAT DIL AFZA’ (hereinafter “Impugned Mark’), which, the appellants claimed, is deceptively similar to the registered mark ‘ROOH AFZA’, was rejected. The appellant had further claimed that use of the said mark, in respect of any goods, particularly syrups/sharbats, was intended to deceive customers; constitutes unfair competition; would result in dilution of the trademark ‘ROOH AFZA’; and amounts to passing off.

The learned Single Judge held that pursuant to settled position of law, the appellants can claim exclusivity only in respect of the complete trademark ‘ROOH AFZA’ and not the two words – ‘ROOH’ and ‘AFZA’ – that constitute the trademark. The learned Single Judge also rejected the contention that the two competing marks being similar, and instead held that the consumers would be able to distinguish between ‘ROOH’ and ‘DIL’. The learned Single Judge also held that for the appellants to claim any right in respect of the word ‘AFZA’, it would be necessary to show that the said mark had acquired a secondary meaning to denote the appellants’ product ROOH AFZA. It was held that whilst the words ‘ROOH AFZA’ may have acquired a secondary meaning to indicate the appellants’ product, the word ‘AFZA’ by itself did not appear to have acquired any such secondary meaning. In view of the aforesaid reasoning, the application for seeking an interim injunction, restraining the respondent from using the Impugned Trademark in respect of its products, was rejected.

The Division Bench of the Delhi High Court vide Judgment dated 21.12.2022, overturned the Impugned Order and restrained the respondent from manufacturing and selling beverages under the Mark ‘DIL AFZA’. The Division Bench observed that:

Insofar as the similarity between the two competing trademarks in this case is concerned, the learned Single Judge correctly observed that the two trademarks are composite marks and the words ‘ROOH AFZA’ and ‘DIL AFZA’ cannot be dissected. The similarity must be determined on the marks as a whole. However, in viewing whether composite marks are deceptively similar, it is permissible to examine a dominant part of the mark.

In the present case, the Bench stated that the commercial impression of the impugned trademark is deceptively similar to the appellants’ trademark, due to the following reasons:

a. First of all, the impugned trademark has certain phonetic similarities inasmuch as the trademarks end with the word ‘AFZA’. The last syllables, which form the majority of the syllables, in both the competing mark are thus similar.

b. Second, the word ‘AFZA’ is a significant part of the trademark ‘ROOH AFZA.’ Undoubtedly, it is a contributing feature to the overall commercial impression of the trademark ‘ROOH AFZA’ as well as the impugned trademark.

c. Third, if recall from memory is triggered by the English meaning of the words ‘ROOH’ and ‘DIL’, the fact that heart and soul is a commonly used phrase, provides a common conceptual background.

d. Fourth, the trade dress, which includes the shape of the bottle, the overall design of the bottle, the placement of the house mark, the colourfully busy design of the label, are the material contributors to the overall commercial impression of the competing trademarks.

e. Further, considering the value of the product, the Court observed that both the products are low-priced products, therefore the focus that the customer may devote to the product on a shelf or on an online marketplace would, at best, be cursory.

In conclusion, the Court was of the view that prima facie, the word ‘ROOH AFZA’ has served as the source identifier for the appellant’s product for over a century and it has acquired immense goodwill. Hence, the same requires a high degree of protection. The Court, therefore, set aside the order of the Single Judge and held that the respondent (defendant) would not manufacture and sell syrups and beverages falling under Class 32 under the impugned trademark ‘DIL AFZA’, till the disposal of the suit.

[1]Order dated 21st December 2022, in Hamdard National Foundation (India) & Anr. v. Sardar Laboratories Pvt Ltd FAO(OS) (COMM) 67/2022 and CM No. 13491/2022 passed by Delhi High Court