Consumers tend to recognize their preferred brand labels as a whole and not in broken fragments. This has been the view of Courts generally while hearing disputes relating to similar trademarks are brought before the court. However, a divergent view was taken by the Delhi High Court in the case of Hamdard National Foundation & Anr. vs. Sadar Laboratories.
Hamdard National Foundation (hereinafter referred as “Hamdard”) filed a trademark infringement suit against Sadar Laboratories (“Sadar”) for using the mark “Dil Afza” under class 32, for the purpose of manufacturing and selling sharbat, which is deceptively similar to Hamdard’s popular sharbat “Rooh Afza”.
Hamdard has a duly registered mark Rooh Afza under class 32 for selling fruit drinks.. It claimed that its product is “unique in its colour combination, layout and features, with a specific floral arrangement on the bottles”. Hamdard has been selling Rooh Afza sharbats since August 1942 and claimed that it has now obtained the status of a well-known trademark. Hamdard claimed that Sardar is deceptively selling sharbats under a similar mark – Dil Afza. Hamdard has further claimed that, Sadar claims to have been in the use of the mark Dil Afza since 1949, however, no documents to that effect have been put on record.
On the other hand, Sadar contended that both the marks Rooh Afza and Dil Afza have co-existed peacefully under class 5 (pharmaceuticals) where the parties have been involved in the selling of medicines and there has been no confusion amongst the consumers. Therefore, Hamdard’s claim that the sale of sharbats under the same name would create confusion must be set aside. Sadar also explained that its label is distinct as it bears fruits and the bottle bears a brown cap as opposed to the flowers and yellow cap used by Hamdard.
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The Delhi High Court Bench considering the claims of Hamdard observed that the goodwill and reputation of Rooh Afza cannot be overlooked. However, while siding with Sardar, the Court held that accepting the marks in question to be identical “would be taking an extreme position”. The Court then went on to bifurcate the mark Rooh Afza into “Rooh” and “Afza” and stated that the term “afza” cannot be associated only with the product of Hamdard and hence, Sardar could not be restricted from using such a word for its label since no separate registration for the words “Rooh” and “Afza” had been filed for by Hamdard.
The Court also went on to consider Sadar’s contention that there was no confusion with respect to the terms being used in the pharmaceutical front, and held that Sadar has been using ‘Dil Afza’ for Unani medicines from at least since 1976, even then, for such a long time in the field of a more sensitive market of medicine, apparently, there has been peaceful co-existence with no confusion arising in the minds of the consumers. Therefore even if the sharbat has been produced only since 2020, no case has been made out to restrain Sadar from marketing its sharbat under the name ‘Dil Afza’. The claims made by Hamdard would have received a green signal, only in the situation where either the words “Rooh” and “Afza” were registered simultaneously, or Sadar was involved in selling its products under the label “Rooh Afza” as a whole.
Presently, a rectification suit has been filed by Hamdard claiming non-disclosure of facts before the Trademark Registry and the same is currently pending. The Hon’ble Bench has observed that presently no interim injunction shall be awarded in the matter while ordering Sadar to submit their accounts and quarterly reports for the purpose of record until the disposal of the suit, which shall take place after the disposal of the rectification suit filed by Hamdard.
