In January last year, a single-judge bench of the Delhi High Court in the case of Hamdard National Foundation (India) v. Sadar Laboratories Pvt. Limited had refused to grant an interim injunction preventing the defendant from using the mark ‘Sharbat Dil Afza’ which was alleged to infringe on the plaintiff’s mark ‘Sharbat Rooh Afza’. The injunction was refused on the ground that the marks were dissimilar and that similarity in the meaning of the words ‘Dil’ and ‘Rooh’ was not a substantial ground to hold that there would be confusion between the two marks, despite there being a common suffix. The facts of the case and an analysis of the order can be found here.
Following this decision, Hamdard filed an appeal seeking a permanent injunction against Sadar from using the mark ‘Sharbat Dil Afza’. In December 2022, this appeal was then taken up for consideration by a division bench which allowed the same and set aside the order of the single-judge bench.
The court noted the phonetic similarity between the marks ‘Sharbat Rooh Afza’ and ‘Sharbat Dil Afza’, while also comparing their trade dress to set aside the single judge bench order. Hamdard’s reputation and goodwill with respect to the mark ‘Sharbat Rooh Afza’ were held to be of importance while stating that the defendant would gain an undue advantage if allowed to continue using the ‘Sharbat Dil Afza’ mark. The decision considered the overall commercial impression that is created by the ‘Rooh Afza’ mark to hold that the ‘Dil Afza’ mark lacked a sufficient degree of dissimilarity and hence infringed upon the appellant’s mark. The impression created by the label, the trade dress of the two products, and the shape of the bottles – all of which create the overall impression were noted to be determinants to arrive at the conclusion that the marks were similar. The goodwill acquired by ‘Rooh Afza’ and its function as a source identifier for the appellant’s product from 1907 was noted as a reason to accord the mark a high degree of protection.
The single-judge bench, on the other hand, had focused on Hamdard’s argument that ‘Dil’ and ‘Rooh’ shared similar meanings (‘deep emotion’) which would lead to the consumer being confused between the two products. While it was noted in the single-judge bench order that a common consumer could not confuse ‘Dil Afza’ with ‘Rooh Afza’ even if the marks share a similar meaning, the present order notes that there exists a level of phonetic similarity between the marks and given that the term ‘Afza’ forms a majority of the syllables, this similarity is even more pronounced.
There are two main threads of reasoning can that be identified in the order- one pertaining to the anti-dissection rule; and two regarding the test of association and the overall commercial impression created by the products.
The anti-dissection rule requires individual components of a trademark not to be split up into its component parts and then have each part compared with the corresponding parts of the conflicting mark. What matters is the overall commercial impression of the entire trademark on an ‘ordinary person of average intelligence and imperfect recollection’. However, relying on the U.S. Court of Appeals for the Federal Circuit’s decision in re National Data Corporation, the order notes that the components of a trademark can be compared as a preliminary step towards the final determination of the likelihood of confusion.
This preliminary step of dissecting the mark into its components, aided in pointing out that ‘Afza’ formed an integral part of both marks and since the term, ‘Afza’ meant “increasing” or “giver of plenty”, it could not be said to be descriptive of sharbat (sweet syrups) nor any of its attributes. Given this, the order notes that the respondent’s use of ‘Dil Afza’ will have to be judged against the fact that ‘Afza’ was a significant part of the appellants’ trademark.
In the order, there seems to be an inclination to adopt a more liberal approach towards focusing on dominant aspects of marks, something the single-judge order specifically refused in favour of considering looking at the composite mark. However, the approach in both orders deviates from the well-founded principle that it is ultimately the composite mark that tends to create an impression on a typical consumer as opposed to the sum of its parts. The division-bench order cites McCarthy on Trademarks and Unfair Competition to justify this inclination, that, “it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composite as a whole” (emphasis added). However, it goes on to ignore the final stance noted by this extract (also produced in the order) that, “a mark should not be directed or split up into its component parts and each part then compared with the corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important.” when it pronounces its judgment that is based on this dissection rather than the composite mark.
While the previous order focused on the prefixes, the division bench’s order focus on the suffix brings it to a different conclusion regarding applying the test of association and the crucial point of difference between the two decisions comes down to the application of this fairly subjective test. The decision goes on to show that the standard for identifying the ‘ordinary person of average intelligence and imperfect recollection’ for the application of the test of association remains inherently subjective – a reading of both the orders in this matter would suggest that it is possible that the results of the application of the test may vary based on how the overall impression itself is identified. Similarly, the line of cases cited in both orders offer some semblance of predictability in what parameters are to be used when identifying
this standard – which is to focus on the overall impression a mark creates – but the application of this standard and weighing it against the evidence produced in support of the contested marks remains fairly unpredictable.
This decision seems to favour identifying a mark’s dominant aspect even though it acknowledges the anti-dissection rule; and this also finds backing in another recent order by the Delhi High Court in Subway IP LLC vs Infinity Food where similar reasoning is followed. While the overall commercial impression ultimately worked in the favour of the appellant when the order arrives at the conclusion, the dissection of the mark to aid this reasoning goes against the established tenets of trademark protection and broadens the boundaries of protection in a manner that may not necessarily be intended by the decision.