Emotional about sharbats?

Emotional about sharbats?

Right at the start of the year, we came across an interesting order passed by the Hon’ble Delhi High Court.

Can we confuse Rooh Afza with Dil Afza?

No, said the Hon’ble Court while dismissing the injunction application filed by the owners of of Rooh Afza against Dil Afza. Clearly, the decision was arrived at by considering that the yardstick to determine confusion is the imperfect memory or recollection of a consumer. In fact, the Hon’ble Judge stated that, ‘It would be taking an extreme position, even if the consumers were connoisseurs, to believe that the use of the word ‘Rooh’ and ‘Dil’ would cause confusion because they connote deep emotion’.

The Court further observed that the word ‘Afza’ has not acquired a secondary meaning by itself and in order to claim exclusivity to the word ‘Afza’, the Plaintiffs would have to show that they had built a reputation leading to the acquisition of a secondary meaning. The Court compared the meaning of the two words “Rooh” and “Dil” stating that they do not denote the same things and there cannot be a confusion being created on account of the meaning of such words. The Court reiterated the principle adopted in examining confusion.

Finally, the Court decided as to whether the simultaneous use of ‘Dil Afza’ would prejudice the Plaintiffs’ business, to which it said that the Defendant had a peaceful co-existence in the market of Unani/ Ayurvedic medicines with no confusion arising in the minds of the consumers and 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 ‘Dil Afza’.

The suit was filed by the Plaintiffs alleging that the Defendant was infringing their well-known trade mark ‘Rooh Afza’ and also passing off. Though as noted in the order, the interim application of the Plaintiffs did not seek an injunction against passing off.

The Plaintiffs claims to have been producing and marketing their products under the name ‘Rooh Afza’ since the year 1907. The first registration in Class 32 for the trade mark  was obtained in the year 1948 by the Plaintiffs. In fact, the Plaintiffs have obtained several trade mark registrations for its various “Rooh Afza” formative marks under Class 32 which are valid and subsisting till date.

The Plaintiffs claimed that around March 2020, they came across an advertisement, where the Defendant was launching its syrup/sharbat bearing the mark ‘Dil Afza’, and which were deceptively similar to ‘Rooh Afza’ ringlet bottles as per the Plaintiffs. They contended that the Defendant’s adoption of such a deceptively similar mark, unique get-up, and design for its product clearly involved mala fide. While the Defendant had been using its trademark for medicines, in 2018, it sought registration in Class 5 claiming to have used “SHARBAT DIL AFZA” since 1949. The drug licence had been obtained in 1976.

The Defendant stated it had been using their mark “SHARBAT DILAFZA” since 1949 with no objection being raised by Plaintiffs since then. The Defendant strongly relied upon the word “Afza” and stated that the term was neither distinctive nor coined by the Plaintiffs and had a distinct dictionary meaning, namely “increasing; adding”. The Defendant claimed that the term is common to trade especially amongst public consuming sharbats and other like beverages. The Defendants also argued that the labels were entirely different in the sense that the Plaintiff’s label contained flowers, whereas the Defendant’s label had fruits; the fonts were different; the house mark of the Defendant was “SADAR” which had no relevance with the Plaintiff’s “HAMDARD”.

The Defendant further argued that the Plaintiffs had delayed in filing the present suit because the Defendant’s mark had been displayed in the year 2019 and since then, the Plaintiffs had not raised any objection. The Defendant argued that the Plaintiffs has also failed to show that “Afza” had obtained a secondary meaning in relation to their products exclusively.

Accordingly, no interim injunction was granted against the Defendant, and it was only directed to maintain a true account of sales. However, in view of the rectification filed by the Plaintiff against the Defendant’s registered trade mark, the present suit was stayed till the disposal of the rectification application by the Ld. Registrar of Trade Marks.

Dipro Dawn

Having graduated from the Law School, Dipro joined the firm as a trainee with the Trade Marks team. He was soon made a part of the team who now advises clients in various sectors, irrespective of the size of the business. He is one of the active members in the trademarks opposition team who also handles cancellation actions from time to time. Besides, he often assists the litigation team in matters concerning all kinds of IP. He takes great interest in other research-related activities.

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