CASE COMMENT ON TRADEMARK CONFLICT OF ROOH AFZA VS. DIL AFZA

INTRODUCTION:

“A great trademark is appropriate, dynamic, distinctive, memorable and unique “ [1]

A trademark is a form of intellectual property that typically consists of a recognized mark, design, or another type of expression that distinguishes a product or service from those of others. When we think about protecting a trademark at the national or regional level, it can be obtained by filing an application for registration with the national/regional trademark office and paying the required fees. But at the international level, there are two options either filing a trademark application with the trademark office of each country in which the applicant seeks protection or by using the WIPO’s Madrid System.[2] If a trademark is registered, it grants the owner an exclusive right to use it, or it can be licensed/ assigned to another party for use in exchange for royalties. The advantage of the registration of a trademark is that it provides legal protection and strengthens the position of the right holder by the action of enforcement, for example, in the event of litigation.

BACKGROUND OF THE CASE:

The case of HAMDARD NATIONAL FOUNDATION (INDIA) & ANR. vs. SADAR LABORATORIES PVT. LIMITED[3], also known as ROOH AFZA vs. DIL AFZA is a classic example regarding the protection sought for individual words used in a registered trademark (a phrase), wherein the individual words are commonly used in the particular product market. The plaintiff, in this case, Hamdard National Foundation (India), is a charity foundation created in 1906 by Hakeem Abdul Hameed that primarily focuses on disbursing the company’s revenues to advance the interests of society. The Hamdard company’s income has been dedicated entirely to its foundation for several years. For almost a century, the Plaintiffs have been making and distributing, among other things, Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic drinks. The defendant company/Sadar Laboratories Pvt. Ltd. has been in the business of making Unani medicines, syrups, and botanical items since 1949, through its progenitor, M/s. Sadar Dawakhana.

FACTS OF THE CASE:

1. The current lawsuit was brought because the defendant was not only infringing on the plaintiffs’ well-known trademarks in ‘Hamdard’ and ‘Rooh Afza,’ but also passing off its products as those of the plaintiffs by using the name ‘Dil Afza.’

2. The plaintiffs argue that they have built an enormous reputation and goodwill in respect to ‘Rooh Afza,’ with revenues of Rs.30983.57 lakhs in 2019-20 and Rs.16, 281.41 lakhs in 2020-21. (Till August 2020). The plaintiffs have expended significant promotional costs, as evidenced by their spending of Rs.459.10 lakhs in ads in 2019-20 and Rs. 577.89 lakhs in 2020-21, up to August 2020.

3. The plaintiffs have also identified the years in extensive detail when the trademark ‘Rooh Afza’ was initially registered about these items, the first being on August 3, 1942. Even today, the registration is still valid[4]. The plaintiffs’ product/sharbat was sold under the trademark ‘Rooh Afza’ in bottles for a century, having a one-of-a-kind colour scheme, layout, set-up, and arrangement of elements, notably a unique and distinct flower arrangement.

ISSUES OF THE CASE :

1. Did the defendant infringe on the plaintiff’s trademark rights?

2. Is the defendant’s trademark registration is valid?

3. Whether the defendant’s trademark would confuse the consumers if used for similar products?

PLAINTIFF’S ARGUMENT :

• In the light of interim protection of the trademark rights, the plaintiffs established this lawsuit, when they learned in March 2020 that the defendant had produced advertising promoting its syrup/sharbat, carrying the mark ‘Dil Afza,’ in deceptively identical ringlet bottles to that of the ‘Rooh Afza’ bottle. The defendant additionally used a deceptively similar mark, distinctive get-up, and design for its product with malicious intentions. On the 10th of June, 2018, an application for registration of the mark ‘Sharbat Dil Afza’ in the name of the defendant appears to have been submitted based on ‘intended to be used.’
• The plaintiffs contented that Injunctions were likely to be issued against the defendant. Because, the defendant had been using its trademark for medicines, i.e., in Class-32, but in 2018, it requested registration in Class-5, stating that it had been using the said brand for medicines since 1949. The medicines license, however, was secured only in 1976, but the plaintiffs had been producing and marketing their product/sharbat under the name ‘Rooh Afza’ since 1907, much before the defendants with the first registration of its trademark in 1942.
• Roof Afza was a well-known trademark that met the criteria of a “well-known trademark” under Section 2(1)(zg) of the Trade Marks Act, 1999.[5] Just obtaining a drug license was insufficient to prove usage, and the defendant failed to submit any documentation despite the chance to demonstrate that the term ‘Dil Afza’ had been in use since 1949. It was contended that the trademark was registered via deceit because no proof of usage was presented to the Registrar. As a result, the registration was null and void, and the defendant was unable to claim any benefits under Section 28 of the Act. Also, differences in packaging and product names were deemed unimportant since the potential of misunderstanding was high enough.[6]

DEFENDANT’S ARGUMENT :

• The defendant strongly opposed granting any sort of interim relief to the plaintiffs as they contended that according to the terms of Section 29 of the Trade Marks Act, 1999, the infringement complaint did not stand because both marks were registered.[7]
• It has been said that the term ‘Afza’ has become widely used in the sharbat trade, with several players in the sharbat market utilizing it. The learned counsel argued that the plaint also refers to ‘Hamdard’ in addition to ‘Rooh Afza,’ since it was ‘Hamdard,’ not ‘Rooh Afza,’ that was the reputed and eminent mark, not ‘Rooh Afza,’ alone.
• The defendants also submitted that ‘Dil Afza’ had been in use in Class-5 since 1949. In Class-5, the name ‘Rooh Afza’ was also used. From 1949 until 2020, there was no doubt. As a result, the defendant’s use of the name ‘Dil Afza’ for syrups and sharbat was not malicious or designed to cause misunderstanding. It was argued that because the defendant had created its reputation over time, there was no need for the defendant to acquire a false trademark to benefit from the plaintiffs’ reputation.
• The plaintiffs did not acquire distinct registrations for the words ‘Rooh’ and’Afza,’ and the registration was for the complete label, i.e., ‘Rooh Afza.’ Similarly, the defendant had obtained registration for the complete ‘Dil Afza’ label/trademark and could not have obtained registration for the phrases ‘Dil’ or ‘Afza’ separately. Sections 9(a) and (c) of the Trade Marks Act, 1999, and Section 11 of the Trade Marks Act, 1999, would have disallowed such registrations.
• They further argued that there could be no misunderstanding between the defendant’s product, ‘Dil Afza,’ and the plaintiffs’ product, ‘Rooh Afza,’ due to the get-up, outline, and labeling of the two items.
• Also, no class of consumers would be misled into believing that the defendant’s product was somehow connected to that of the plaintiffs because ‘Afza’ was a non-distinctive word and there was a significant difference between the words ‘Dil’ and ‘Rooh,’ one meaning ‘heart’ and the other ‘spirit.’ Those desirous of buying ‘Rooh Afza’ would buy ‘Rooh Afza,’ and those satisfied with the defendant’ Thus, despite the widespread use of the term ‘Afza,’ there was no room for misunderstanding.
• It is important to note that the plaintiffs’ label contained flowers, whereas the defendant’s label contained fruits; the fonts were different; the defendant’s product label also contained the house-mark ‘Sadar’ and its monogram at the top center, clearly indicating the source of the product to be the defendant and having nothing to do with the plaintiffs’ house-mark ‘Hamdard’; The color of the cap differed because the plaintiff’s product has a yellow cap while the defendant’s product has a brown cap; the bottles are also different.
• Hence, the plaintiffs could only claim the whole world for which they had received registration, and there could be no uniqueness given to common words used in the field.[8] Furthermore, the plaintiffs had failed to demonstrate that the word ‘Afza’ had acquired a secondary meaning that was solely related to their products. Ultimately, the relief in the interim application being fundamentally the same as that in the main suit, no interim injunction could be granted[9]

JUDGEMENT: [10]

The judgment was pronounced on 6^th January 2022. The crucial points of judgment are as follows:

• The plaintiffs’ mark, ‘Rooh Afza,’ and the defendant’s mark, ‘Dil Afza,’ are both registered. A validly registered trademark grants the registered proprietor the exclusive right to use that trademark, subject to the exception that if two people are registered proprietors of trademarks that are identical or nearly identical, their exclusive right to use any of those trademarks cannot be enforced against each other.
• Of course, the arguments have been that the defendant’s mark could not have been validly registered because it is similar to the plaintiffs’ trademark, which was registered in 1942 and for the same goods, namely ‘sharbat,’ and there is a likelihood of public confusion [11]
• To that reason, the plaintiffs’ claim of having created a great reputation and goodwill in respect of their trademark ‘Rooh Afza’ cannot be dismissed even on a prima facie basis.
• There is a lot of difference between the words ‘Rooh Afza and ‘Dil afza’ and also there is no identical mark.
• The resemblance is desired because both ‘Dil’ and ‘Rooh’ evoke strong emotions, and both share the term ‘Afza.’ The criterion to be used in assessing confusion emerging in the mind is that of a consumer with imperfect recall or recollection and ordinary sensibility, as the courts have consistently found.
• Even if the buyers were connoisseurs, it would be a stretch to imagine that the usage of the words ‘Rooh’ and ‘Dil’ would generate misunderstanding due to their profound emotional connotations. Purchasing a bottle of sharbat may elicit feelings, but not to the depths that the plaintiffs had hoped for. Those who appreciate this profound feeling, in any event, will be able to tell the difference between ‘Rooh’ and ‘Dil.’ We are concerned, however, with the average customer, for whom the terms ‘Dil’ and ‘Rooh’ do not mean the same thing in everyday usage. The meanings of the two terms cannot cause any mistake.
• Also, to add the plaintiffs make no mention of applying for and receiving registration for the exclusive use of the term ‘Afza.’ As a result, the plaintiffs may claim exclusivity only for the full term ‘Rooh Afza,’ not for each of the two components that make up the trademark.
• However, the application is rejected with a directive to the defendant to keep a truthful account of ‘Dil Afza’ sales.

CONCLUSION:

As a result, it is evident that the plaintiffs may only claim exclusivity over the full term ‘Rooh Afza,’ not the two words that makes up the trademark. In other words, the Hamdard foundation registered the trademark “ROOH AFZA” as a whole, not only “AFZA.” Despite the fact that DIL AFZA entered the market in 1976, there appears to have been harmonious coexistence with no misunderstanding in the minds of customers for such a long period in the more sensitive market of medicine. As a result, Dil Afza received a favorable verdict strengthening the conception around the combination of words used for trademark protection.

REFERENCES :

1. TRADEMARKS -WIPO, https://www.wipo.int/trademarks/en

2. See judgment,  https://www.livelaw.in/pdf_upload/amn06012022sc5512020180826-1-407137.pdf

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[1] PRIMO ANGELI, Brainy quote

[2] The Madrid system is a simple and cost-effective method of registering and administering trademarks across the world. To apply for protection in up to 125 countries, submit a single application and pay a single set of costs. Change, renew, or grow any worldwide trademark portfolio using a single centralized system.

[3] CS (COMM) 551/2020

[4] Details of Trademark 

Wordmark: ROOH AFZA

Proprietor: HAKIM ABDUL HAMID

Class/classes: 5

Application Number: 109340

Status: Registered

[5] Unani Dawakhana v. Hamdard Dawakhana, 1930 SCC OnLine Lah 300

[6] Page 8 of judgement text of the case

[7] Page 4 of Judgement text of the case

[8] Cadila Laboratories Ltd. v. Dabur India Limited, 1997 SCC OnLine Del 360;

Titan Industries Ltd. v. Kanishk Jewellery, 2002 SCC OnLine Mad 869;

[9] Siel Edible Oils Limited (SEOL) v. Khemka Sales (P) Ltd. 2009 SCC OnLine Del 3983.

[10] Page 11 of judgment text

[11] Section 11 of the Trade Mark Act, 1999