Others Trademark

Roof Afza v. Dil Afza: Finding Meaning in Trademark Protection


A bottle of Rooh Afza and the text “only Rooh Afza’s got the taste of royalty”. Image from here

In January, the Delhi High Court in the case of Hamdard National Foundation (India) v. Sadar Laboratories Pvt. Limited refused to grant an interim injunction in favour of the plaintiff in a case of trademark infringement concerning the plaintiff’s mark ‘Rooh Afza’ and the defendant’s mark ‘Dil Afza’. While the case has been settled, it provides an interesting example of how the boundaries of trademark protection are often tested by claimants seeking the enforcement of their rights.

Background

The case decided by a single-judge bench, concerned an allegation of infringement of trademark, disparagement, dilution and tarnishment, damage to reputation, and tarnishment of brand equity filed by Hamdard National Foundation (Hamdard) against Sadar Laboratories (Sadar Labs). Hamdard the manufacturer of Rooh Afza, a well-known syrup/sharbat, alleged that Sadar Labs had infringed its well-known trademark in ‘Rooh Afza’ and was passing off its products as those of the plaintiff’s by using the mark ‘Dil Afza’, with the meaning of the words ‘Rooh’ and ‘Dil’ being similar. The plaintiff claimed that they have been using the mark for more than 100 years and had first registered their mark in 1942. They claimed that in March 2020, the defendant launched a syrup/sharbat ‘Dil Afza’ with a mark, get-up and design deceptively similar to that of the plaintiff’s.

The defendant, on the other hand, argued that they had filed for registration of their mark ‘Dil Afza’ in 2018, claiming that the same has been in use since 1949. The defendant argued that since both the marks were registered, Section 29 of the Trade Marks Act could not be applied. Second, it was argued that ‘Dil Afza’ had been in use since 1949 and that the defendant had built their own reputation. The defendant noted that the plaintiff did not hold separate registrations for ‘Rooh’ and ‘Afza’, thus could not claim a monopoly over the mark ‘Afza’ and that ‘Afza’ was not a distinctive word.

In a rejoinder, the plaintiff claimed that Sadar Labs had provided no evidence to establish that ‘Dil Afza’ has been in use since 1949 and further claimed that the registration itself was invalid.

Judgment

The judgment notes that both ‘Rooh Afza’ and ‘Dil Afza’ are registered marks and thus the exclusive right to use could not be enforced against each other. The judgment holds that the marks of the plaintiff and the defendant are not identical. It held that “there cannot be a confusion being created on account of the meaning of the two words”, thus rejecting the plaintiff’s plea. The judgment notes that since the plaintiffs had filed an application against the defendant for rectification with the Registrar of Trade Marks, the suit would have to be stayed as per Section 124 of the Trade Marks Act. However, it passed an interlocutory order under Section 124(5) dismissing the plaintiff’s application holding that ‘Dil Afza’ and ‘Rooh Afza’ were not identical and also that the plaintiff could not establish their claim of exclusive use of the term ‘Afza’.

Analysis

It is interesting that the plaintiff sought an injunction contending that the words ‘Dil’ and ‘Rooh’ both translate to ‘deep emotion’, and with the word ‘Afza’ meaning adding or increasing being common between them, it would lead to customer confusion. Even if the suffix is similar, the marks are substantially dissimilar so as to not cause much confusion to a consumer. Seeking an injunction because the meaning of the words is similar and not that the words themselves are similar, seems to stretch the field of operation of trademark protection to beyond avoiding similarity and confusion. A common consumer cannot be expected to discern the meaning of a product’s mark that they purchase. The purpose of trademark protection is to ensure that a competitor does not unfairly gain by using a mark that distinguishes the products or services of a firm. The protection does not extend to protecting the meaning of the mark and rightfully so. If such protection were to be extended, then it would be possible to easily monopolize marks in a particular field by simply claiming similarity in meaning. Further, trademark law works on the presumption that any association a consumer would make with a particular firm’s mark would purely be limited to the word, sign, symbol, or graphic representation of the mark and not its meaning or any higher-level description of it.

It is not uncommon for brands to use prefixes or suffixes to common terms to create a unique mark for themselves. However, in order to avoid trademark infringement, the new mark will have to be devoid of similarities from any pre-existing marks that use the same prefix or suffix. The mark ‘Dil Afza’ is indeed dissimilar from ‘Rooh Afza’ and also the fact that Hamdard did not have any trademark claim over the term ‘Afza’ works negatively against any claim they could make for similarity between the two.

Hamdard’s petition seems to be in line with its previous claims of trademark infringement wherein they have tested the boundaries of protection that trademark law offers in enforcing their rights. Merely having a similar suffix does not constitute infringement. Previously, Hamdard had also filed a suit against Karan Johar for making objectionable references to ‘Rooh Afza’ in one of his movies. Similar to this previous suit, Hamdard’s action here seems more in line with an attempt to intimidate a competitor by claiming trademark infringement rather than enforcing the protection available for their mark.

(The publication of this post has been delayed due to unforeseen circumstances and it is being posted belatedly) 

2 comments.

  1. Himanshu Arora

    Thank you for sharing this interesting Article.:-)

    But, it is quite strange to see that that the ‘test of association’ was not attended to, here. With Rooh and Dil – being the essential feature (with same suffix), the likelihood of association cannot be easily ruled out here, especially when Rooh Afza has been held to be a well-known TM.

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    Reply
  2. Tom Bale

    Thank you so much for the post you do and also I like your post. Now a days trade mark registration is on demand as people need this for more service of lawyer attorney. Recently I have also registered UK trademark at Regimark SIA and really its very good.

    Reply

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