Trademark Infringement Suit Has To Be Stayed Till Disposal Of Rectification Proceedings Before Registrar: Delhi High Court

Justice Menon thus dismissed the application for stay filed by Hamdard Dawakhana under Order 39 Rule 1 and 2 of CPC.

Background:

The plaintiffs (Hamdard National Foundation and Hamdard Dawakhana, respectively) filed a suit seeking permanent injunction restraining the defendants (Sadar Laboratories Pvt. Ltd.) from infringing their registered trademark 'Rooh Afza' and restraining the defendant from marketing its sharbat under the name 'Dil Afza'.

It may be noted that the defendant had filed an application for registration its mark 'Sharbat Dil Afza' in June 2018. 

Hamdard submitted that it was due to oversight that this application could not be opposed by the plaintiffs and therefore, the defendant has been granted registrations

It was contended defendant's mark is deceptively similar, in get-up and design of the product. Moreover, the trademark 'Rooh Afza' in relation to these products had been registered since 3rd August 1942 and it continues till now. Further, 'Dil' and 'Rooh' entail deep emotions and that the word 'Afza' is common to both.

The Plaintiffs relied on several previous judgements to establish that 'Rooh Afza' was a well-known mark, fitting the definition of 'well-known trademark', starting from 1930 case of the Lahore High Court, known as Unani Dawakhana v. Hamdard Dawakhana, 1930 SCC OnLine Lah 300.

The Plaintiffs had also filed a rectification application on the ground that complete details had not been disclosed to the Registrar of Trademarks by the defendant, during the time of registration.

Defendant's Submissions

The defendants argued that the Urdu word of 'Afza' had become a commonly used word in the sharbat community, and there was a stark difference between the meaning of 'Dil' which means heart and 'Rooh' which means spirit, therefore it did not cause confusion.

The defendants claimed that they had been using 'Dil Afza' in Class-5 (relating to Unani/Ayurvedic medicines) since 1949 till 2020 and there has been no confusion because both brands have built their own reputation.

It was also argued that "the plaintiffs' label contained flowers whereas the defendant's label had fruits; the fonts were different" and both the parties prominently labelled their products as 'Sadar' and 'Hamdard', causing no confusion. Additionally, since both trademarks were registered, there was no infringement.

Findings

The Bench noted that the standard to be adopted while determining confusion arising in the mind is of a consumer of imperfect memory or recollection and of ordinary sensibilities.

"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," it observed.

It further held that Hamdrad has not obtained registration for the exclusive use of the word 'Afza'. "Thus, it is clear that the exclusivity that the plaintiffs can claim is to the complete name 'Rooh Afza' and not to either of the two words that constitute the trademark."

It finally dismissed the application for interim injunction, stating,

"In order to claim exclusivity to the word 'Afza', the plaintiffs would have to also show that they had built a reputation leading to the acquisition of a secondary meaning whereby 'Afza' would denote only 'Rooh Afza', being the product of the plaintiffs. Thus, while 'Rooh Afza', that is the complete word, may have acquired a secondary meaning, indicative of sharbat produced by the plaintiffs, 'Afza' by itself does not appear to be of that category."

The Bench however directed the defendants to maintain an account of sales of 'Dil Afza' during the pendency of the suit and submit a quarterly report to the court, till the disposal of the suit.

Case Title: Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Limited

Citation: 2022 LiveLaw (Del) 9

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