17 May 2023 1:43 PM GMT
The Supreme Court on Wednesday refused to entertain a petition filed by Sadar Laboratories Pvt Ltd challenging Delhi High Court's order restraining it from manufacturing and selling any product under the trademark "Dil Afza" till the disposal of the trademark infringement suit filed by Hamdard National Foundation (India), which manufactures "Rooh Afza". The trademark dispute between Rooh Afza...
The Supreme Court on Wednesday refused to entertain a petition filed by Sadar Laboratories Pvt Ltd challenging Delhi High Court's order restraining it from manufacturing and selling any product under the trademark "Dil Afza" till the disposal of the trademark infringement suit filed by Hamdard National Foundation (India), which manufactures "Rooh Afza". The trademark dispute between Rooh Afza v Dil Afza was heard by a bench comprising CJI DY Chandrachud, Justice PS Narasimha, and Justice JB Pardiwala.
Remarking that the Delhi High Court had taken a correct view, the bench refused to entertain the petition. CJI DY Chandrachud said–
"It can't be denied that Rooh Afza has a well established reputation in India."
The counsel for Hamdard National Foundation had argued that–
"There are several authorities that say that it has to be considered as a whole. They started selling Dil Afza in medicine bottles in 1976 in tiny bottles. Marks have to be considered as a whole. It has a dishonest intention. Why did they start selling it in these bottles? They started in 2018. I've been doing it since 1907. There is a dishonest intention."
In December 2022, a Division bench of the Delhi High Court had restrained manufacturing of Dil Afza while hearing an appeal moved by manufacturers of Rooh Afza against rejection of its application seeking an interim injunction against Sadar Laboratories Pvt. Ltd., for infringing its registered trademarks. In the suit, the appellants had claimed that use of marks like "Sharbat Dil Afza" or "Dil Afza" are likely to cause confusion and amounted to infringement of its registered trademark "Sharbat Rooh Afza" or "Rooh Afza". The single judge had rejected the argument that the two competing marks were similar. The court had said buying a bottle of sharbat would not entail any deep emotion and in any event, the consumers would be able to distinguish between 'Rooh' and 'Dil'. While refusing to pass an interim injunction, the single judge had directed the respondent to file a quarterly report in regard to its accounts till the disposal of the suit. The suit was also stayed in view of section 124(1)(b)(i) of the Trademarks Act.
While setting aside the impugned order, the division bench of Delhi High Court observed that when one examines the question as to whether the words "Rooh Afza" and "Dil Afza" are similar, the fact that both the composite marks end with "Afza" lends an element of similarity to both the marks.
"…this also acquires a higher significance since 'AFZA' is not a descriptive word of the product in question. But the use of the word 'AFZA', as a part of the impugned trademark, may not be dispositive of the question – whether the overall commercial impression of the impugned trademark is confusingly similar," the court had said.
Case Title: Sadar Laboratories Pvt Ltd v Hamdard National Foundation (India) | SLP(C) No. 9494/2023
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