DELHI HC VERDICT ON ‘ROOH AFZA’ TRADEMARK

On December 21, the Delhi High Court, in the case of Hamdard National Foundation (India) vs Sadar Laboratories Pvt. Ltd., restrained Sadar Laboratories from manufacturing and selling beverages under the impugned trademark ‘DilAfza’.
The court observed that the trademark ‘RoohAfza’ is prima facie a strong mark requiring a high degree of protection as it has acquired immense goodwill.

What is a trademark?

A trademark is a distinctive sign or indicator used by a business organisation to distinguish its products or services from those of other entities.
It serves as a badge of origin exclusively identifying a particular business as a source of goods or services.
Trademark infringement is the unauthorised usage of a sign that is identical or deceptively similar to a registered trademark.

What is the dispute?

The manufacturers of ‘RoohAfza’ moved an appeal against the rejection of its application seeking an interim injunction against Sadar Laboratories Pvt. Ltd. for their product ‘DilAfza’.
The appellant stated before the court that the trademark ‘RoohAfza’ is a highly reputed mark in the market with regard to sharbat (sweet beverage).
Furthermore, it was claimed that the design of the product ‘DilAfza’ is deceptively similar to the get-up and trade dress of the appellant’s product.

What was the court’s verdict?

A Division Bench of the Delhi High Court restrained the respondent (Sadar Laboratories Pvt. Ltd.) from manufacturing and selling any product under the trademark ‘DilAfza’ till the final disposal of the trademark infringement suit.
The court held that “it is not difficult to conceive that a person who looks at the label of ‘DilAfza’ may recall the label of ‘RoohAfza’ as the word ‘Afza’ is common and the meaning of the words ‘Rooh’ and ‘Dil’,
when translated in English, are commonly used in conjunction. In the case of M/s KirorimalKashiram Marketing & Agencies Pvt. Ltd. vs M/s Shree Sita Chawal Udyog Mil, the Delhi High Court observed that
“it is not permissible to copy a prominent part of the registered trademark of another person” and restrained the respondent from using the trademark ‘Golden Deer’ as it was deceptively similar to the plaintiff’s registered trademark ‘Double Deer’ with regards to rice.

What is a strong trademark?

A mark is said to be strong when it is well-known and has acquired a high degree of goodwill.
The degree of the protection of any trademark changes with the strength of the mark; the stronger the mark, the higher the requirement to protect it.
“RoohAfza requires more protection as it is more likely to be subjected to piracy by those who seek to draw an undue advantage of its goodwill”, the judgment said.

What were the Court’s rationales?

Firstly, the impugned trademark ‘DilAfza’ has a phonetic similarity with ‘RoohAfza’.
Secondly, “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”.
Thirdly, the trade dress of the impugned trade mark, which consists of the bottle’s shape, design, the placement of the house mark, colourfully busy design of the label, are the material contributors to the commercial impression of the competing trademark.
Lastly, the value of the product was taken into consideration as well. The court held that as the product is a low-priced consumable item, “the average customer would not deliberate on the details of the product as one would do while taking a high-value investment decision”.

SOURCE: THE HINDU, THE ECONOMIC TIMES, PIB

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