‘ROOH AFZA has immense degree of goodwill, prima facie strong mark’: Delhi HC in trademark infringement claim

Setting aside the single judge’s order, the high court made “absolute” an ad interim order of December 15, 2020, where the respondent had made a statement that they would not manufacture and sell syrups and beverages under the trademark ‘DIL AFZA’. “The said ad interim order is made absolute and shall continue till the disposal of the suit,” the court held, prohibiting the Unani medicine and syrup producer from manufacturing and selling any product under the trademark ‘DIL AFZA’ till the final disposal of Hamdard’s lawsuit.

The bench was hearing an appeal moved by the appellants – Rooh Afza manufacturers Hamdard National Foundation (India) and Hamdard Laboratories – against the rejection of its application seeking an interim injunction against Sadar Laboratories Private Limited, the respondent, for infringing its registered trademark. In a suit before the single judge of the high court, Hamdard claimed that the use of marks like ‘SHARBAT DIL AFZA’ or ‘DIL AFZA’ by the respondent are likely to cause confusion and amounted to infringement.

The single judge, however, had rejected the contention that the two competing marks were similar. The single judge observed that the appellants are claiming similarity on the ground that the words ‘DIL’ and ‘ROOH’ entail deep emotion and the word ‘AFZA’ was common to both. It was observed that buying a bottle of sharbat would not entail any deep emotion, and in any event, the consumers would be able to distinguish between ‘ROOH’ and ‘DIL. Additionally, the single judge asked Sadar Laboratories to file a quarterly report in regard to its accounts till the disposal of the suit and stayed Hamdard’s lawsuit.

On comparing images of Rooh Afza and the impugned Dil Afza, the division bench observed that there was a “similarity in the trade dress (visual appearance) of the two products”. It was noted that both the products had the same deep red colour and texture.

When the respondent argued that the colour of the concentrate is common to both products and cannot be considered for examining any infringement, the high court held, “…the overall impression of the product, the fact that both the bottles are transparent and the colour of the liquid is the same would, undoubtedly, add to the impression of the product that may be recalled by any consumer…it is relevant to note that the structure of the bottles is not materially different. Both the bottles also have circular rings and the position of the trademark label is similar…The ROOH AFZA label uses colourful flowers, leaving an oval space for the mark to be depicted; and the label DIL AFZA has colourful fruits on the boundaries, leaving an oval patch on which the trademark ‘DIL AFZA’ is written. Both the competing labels can be described as busy considering the number of images captured therein”.

On a cumulative assessment of all factors, the high court said that the “commercial impression” of ‘DIL AFZA’ trademark is “deceptively similar” to ‘ROOH AFZA’. It was noted that there were phonetic similarities as both the trademarks ended with the word ‘AFZA’. “Undoubtedly, it is a contributing feature to the overall commercial impression of the trademark ‘ROOH AFZA’ as well as the impugned trademark,” the court held.

The high court further considered the value of the product, noting that as they were both low-priced products, hence the “attention that the customer may devote to the product on a shelf or on an online marketplace would, at best, be cursory”. The high court held that it cannot be expected that an average customer would deliberate on the details of the product as one would do while taking a high-value investment decision. “It is not difficult to conceive that a person who looks at the label of DIL AFZA may recall the label of ROOH AFZA as the word ‘AFZA’ is common and the meaning of the words ‘ROOH’ and ‘DIL’, when translated in English, are commonly used in conjunction,” the court noted.

The high court further noted that the ‘ROOH AFZA’ trademark has been used by Hamdard for over a century. “Prima facie, it is a strong mark. It is also well settled that the requirement of protection varies inversely with the strength of the mark; the stronger the mark, the higher the requirement to protect the same. It is also well-settled that in case of a well-known mark, which has acquired a high degree of goodwill, the mark requires higher protection as it is more likely to be subjected to piracy from those who seek to draw an undue advantage of its goodwill,” the court noted.

Considering the overall commercial impression, the high court prima facie opined that the ‘DIL AFZA’ trademark of the respondent “lacked sufficient degree of dissimilarity, which is required to protect” Hamdard’s trademark.