Delhi HC stated 'prima facie strong mark' in ROOH AFZA's trademark infringement claim

New Delhi: A division bench of the Delhi High Court recently overturned a single judge's decision and granted an interim injunction in favour of Hamdard Laboratories, preventing a manufacturer of beverages and syrups from violating the company's registered "ROOH AFZA" trademark, which has been in use for 100 years.

In its decision dated December 21, a division bench of Justice Vibhu Bahkhru and Justice Amit Mahajan stated that Hamdard's 'ROOH AFZA' trademark was its source identifier' product for over a century and had amassed 'immense goodwill'. The high court held, “We are of the view that the said mark requires a high degree of protection and it is essential to ensure that the competitors keep a safe distance from the said mark.”

The high court overturned the single judge's ruling and declared an ad interim order from December 15, 2020, to be "absolute", where the respondent had said that they will not make and distribute syrups and beverages using the trademark "DIL AFZA,"

“The said ad interim order is made absolute and shall continue till the disposal of the suit,” the court held, preventing the manufacturer of Unani medicines and syrups from using the trademark "DIL AFZA" on any goods they produce or sell until Hamdard's legal case has been resolved completely.

The appellants, Rooh Afza producers Hamdard National Foundation (India) and Hamdard Laboratories, brought an appeal against the decision to deny their request for an interim injunction against respondent Sadar Laboratories Private Limited for violating their registered trademark. Hamdard asserted that the respondent's use of marks like "SHARBAT DIL AFZA" or "DIL AFZA" is likely to cause confusion and constitutes trademark infringement in a lawsuit before the sole judge of the supreme court.

However, the claim that the two competing marks were similar was rejected by a single judge. The appellants are asserting resemblance on the grounds that the terms "DIL" and "ROOH" connote intense emotion, and the word "AFZA" is shared by both, the single court noted. It was noted that purchasing a bottle of sharbat would not elicit strong feelings, and buyers would be able to tell "ROOH" from "DIL" in any case. In addition, the single judge stayed Hamdard's lawsuit and required Sadar Laboratories to submit a quarterly report on its finances until the case was resolved.

The division bench noted that there was a "similarity in the trade dress (visual appearance) of the two products" after comparing photos of Rooh Afza and the contested Dil Afza. Both goods were observed to have the same deep red colour and feel.

When the defendant asserted that the concentrate's colour was shared by both items and could not be taken into account when determining whether there had been any infringement, the high court held, “…the overall impression of the product, the fact that both the bottles are transparent and the colour of the liquid is the same would, undoubtedly, add to the impression of the product that may be recalled by any consumer…it is relevant to note that the structure of the bottles is not materially different. Both the bottles also have circular rings and the position of the trademark label is similar…The ROOH AFZA label uses colourful flowers, leaving an oval space for the mark to be depicted; and the label DIL AFZA has colourful fruits on the boundaries, leaving an oval patch on which the trademark ‘DIL AFZA’ is written. Both the competing labels can be described as busy considering the number of images captured therein”.

The high court concluded that the "commercial impression" of the trademark "DIL AFZA" is "deceptively similar" to "ROOH AFZA" after considering all relevant criteria collectively. Given that both trademarks concluded with the letter "AFZA," it was noted that there were phonetic similarities. “Undoubtedly, it is a contributing feature to the overall commercial impression of the trademark ‘ROOH AFZA’ as well as the impugned trademark,” the court held, Indian Express reported.

The high court also took into account the product's value, saying that while they were both inexpensive goods, hence the

“attention that the customer may devote to the product on a shelf or on an online marketplace would, at best, be cursory”.

The high court ruled that an average buyer cannot be expected to carefully consider all the nuances of a product as one would when making a high-value investment decision. “It is not difficult to conceive that a person who looks at the label of DIL AFZA may recall the label of ROOH AFZA as the word ‘AFZA’ is common and the meaning of the words ‘ROOH’ and ‘DIL’, when translated in English, are commonly used in conjunction,” the court noted.

The high court further pointed out that Hamdard has been using the "ROOH AFZA" trademark for more than a century. “Prima facie, it is a strong mark. It is also well settled that the requirement of protection varies inversely with the strength of the mark; the stronger the mark, the higher the requirement to protect the same. It is also well-settled that in the case of a well-known mark, which has acquired a high degree of goodwill, the mark requires higher protection as it is more likely to be subjected to piracy from those who seek to draw an undue advantage of its goodwill,” the court noted.

The high court stated that the respondent's "DIL AFZA" trademark "lacked sufficient degree of dissimilarity, which is required to protect" Hamdard's trademark, taking into account the overall commercial impression.