Rooh Afza Vs Dil Afza trademark war – Burning Issues

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Rooh Afza v Dil Afza trademark war: Delhi High Court says sharbat lovers can distinguish between the two

The manufacturers of Rooh Afza filed a suit arguing that their name is synonymous with sharbat in India, and that the name Dil Afza is deceptively similar to their product.
[Hamdard National Foundation (India) and Anr v. Sadar Laboratories Pvt Ltd].
suit filed by Hamdard National Foundation, manufacturers of Rooh Afza, arguing that its trademark has obtained a secondary meaning with sharbat and this reputation has been built over a hundred years.
The suit stated that the sale of another sharbat by the name Dil Afza (manufactured by Sadar Laboratories) is deceptively similar to Rooh Afza and that the defendants have infringed on its trademark since the words ‘Dil’ and ‘Rooh’ have similar meanings.
It was also stated that the bottles in which the two products are being sold, are similar.
The Court, however, held that it would be taking an extreme position to believe that the use of the words ‘Dil’ and ‘Rooh’ would cause confusion because they connote deep emotion.
“Buying a bottle of sharbat may involve emotions, but not deep to the extent hoped for by the learned counsel for the plaintiffs. In any case, those who appreciate this deep emotion would be the first to be able to distinguish between ‘Rooh’ and ‘Dil’.
However, we are concerned with the common consumer, to whom, in ordinary use of the words, ‘Dil’ and ‘Rooh’ do not denote the same thing.
There cannot be a confusion being created on account of the meaning of the two words. This plea raised on behalf of the plaintiffs deserves rejection and is rejected,” the Court has said.
It was also held that since the word ‘Afza’ is not descriptive of the sharbat but signifies an increase in deep enjoyment either of ‘Rooh’ or ‘Dil’, in order to claim exclusivity on the word ‘Afza’, the plaintiff had to show that it has built a reputation whereby the word would only mean Rooh Afza, which was not done in the present suit.
“Since ‘Afza’ is not descriptive of the sharbat, but may signify, in keeping with the exposition of the learned counsel for the plaintiffs, an increase in deep enjoyment, either of the ‘Rooh’ or the ‘Dil’, 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 Court held.
The Court, therefore, refused to grant injunction and stayed the suit till the Registrar of Trademarks disposed of the rectification application filed by Hamdard on the issue.
The defendants have also been asked to maintain an account of sales of the ‘Dil Afza’ syrup during the pendency of the suit and to submit to the Court a quarterly report on the same till the case is disposed of.

What is a Trademark?

Trademark is a branch of intellectual property rights.
Intellectual property rights permit people to maintain ownership rights of their innovative product and creative activity.
A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises.
For easy marketing
Trademark laws in india
Trademark Act, 1999 was implemented by the government of India by complying it with TRIPS obligation recommended by the World Trade Organization.
The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the trademark. The Act gives a complete definition for the term infringement which is frequently used

Refusal of registration

Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a trademark.
A trademark cannot be registered if because of (i) its identity with an earlier trademark and similarity of goods or services, (ii) its similarity to an earlier trade mark and the similarity of the goods and there is a probability of confusion.

Section 29

Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person uses the same trademark which is registered by another company or person and creates confusion in the minds of people, it will be liable for the trademark infringement.
Difference between Passing Off and trademark infringement.
Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services.
Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.

Madrid protocol

India Parliament has passed the Trade Marks (Amendment) Bill, 2009 for enacting special provisions relating to protection of trademarks through international registration under the Madrid Protocol.
As per the Amendment Bill, from the date of the international registration of a trademark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trademark to India, the protection of the trademark in India shall be the same as if the trademark had been registered in India.
The Amendment Bill is yet to be notified.

Starbucks Corporation v. Sardarbuksh Coffee & Co.

“Sardarji-Bakhsh” for their 20 new, upcoming outlets until the final hearing of the suit on September 27, 2018.
Following the hearing, it was agreed that the defendant would change the name of all of its outlets to “Sardarji-Bakhsh Coffee & Co.”