ROOH AFZA V. DIL AFZA: A CLASSIC CASE OF DECEPTIVE SIMILARITY

INTRODUCTION 

A trademark is a type of intellectual property that often consists of a well-known mark, design, or other expression that differentiates one product or service from others. If a trademark is registered, the owner has the exclusive right to use it, or it can be licensed/assigned to another party in exchange for royalties. The advantage of registering a trademark is that it gives legal protection and strengthens the position of the right holder through enforcement actions. The legal right to use a trademark enables creators of creative works to prevent others from using a mark that is confusingly similar to their own. As the value of such symbols has increased and left an imprint in the minds of customers, competitors have been tempted to abuse or adopt similar symbols in order to deceive customers into purchasing the wrong product and destroy the image of competitive goods. This has resulted in the concept of "deceptively similar". To protect the interests of rivals and consumers, numerous methods have been used to determine the resemblance of two symbols or marks, including the anti-dissection rule and the dominating feature rule.

The Delhi High Court, in the recent decision of Hamdard National Foundation & Anr. v. Sadar Laboratories Pvt Ltd., attempted to address the confusion between the two by prohibiting the respondent from producing and selling “Dil Afza” because “the overall commercial impression of the impugned trademark is confusingly similar.”

Sections 15 and 17 of the Trademarks Act serve as the foundation for the anti-dissection rule. The above sections suggest that the legislative goal was to treat two or more trademarks as a single, indivisible unit rather than breaking them up into their individual components. Comparing marks should be done so from the perspective of an average person who has limited memory, according to a remark that states that a typical customer should evaluate a composite mark as a whole rather than its separate parts.

The origins of the dominating feature rule can be traced back to a number of court rulings rather than the Trademarks Act. This guideline states that the infringing part must be investigated independently to determine whether it is attempting to use the goodwill unfairly. Although these two criteria appear to be at odds with one another at first glance, they actually work well together.
The article explores the nuances of “deceptively similar” trademarks and how the two tests work together to settle disputes based on a recent Delhi High Court ruling.

This piece of writing will address a significant case law pertaining to trademark protection. A well-known brand called “Handard” produces a wide range of products, including cough and other syrups, unani medications, and ayurvedic medicines. Additionally, the Hamdard group of firms produces a sweet beverage known as “Rooh Afza”. A trademark problem involving a comparable product called “Dil Afza” gives rise to this issue about the same product.

BACKGROUND

The case, which was determined by a single judge bench, involved a claim made by the Hamdard National Foundation (Hamdard) against Sadar Laboratories (Sadar Labs) of trademark infringement, disparagement, dilution and tarnishment, injury to reputation, and tarnishment of brand value. The maker of the popular syrup/sharbat Rooh Afza, Hamdard, claimed that Sadar Labs had violated its well-known trademark in Rooh Afza and was misrepresenting its goods as the plaintiff's by using the mark "Dil Afza," given the similarity in meaning between the words "Rooh" and "Dil." The complainant stated that they initially registered their mark in 1942 and have been using it for over a century. They asserted that the defendant introduced a syrup/sharbat called "Dil Afza" in March 2020 that was misleadingly similar to the plaintiff's in terms of mark, get-up, and design. Despite the fact that the two marks have a common suffix, the injunction was denied on the grounds that the markings were dissimilar and that the terms "Dil" and "Rooh" having similar meanings, is not a significant reason to believe that the two marks would be confused. A permanent injunction prohibiting Sadar from using the mark "Sharbat Dil Afza" was sought in an appeal filed by Hamdard in response to this ruling. When a division bench reviewed this appeal in December 2022, it granted it and overturned the single-judge bench's decision.

FACTS

1)      The present complaint was initiated due to the defendant's infringement of the plaintiffs' well-known trademarks, "Hamdard" and "Rooh Afza," as well as its use of the name "Dil Afza" to mislead consumers into believing that the products were theirs.

2)       With income of Rs. 30,983.57 lakhs in 2019–20 and Rs. 16, 281.41 lakhs in 2020–21 (until August 2020), the plaintiffs contend that they have established a great reputation and goodwill with regard to "Rooh Afza." With advertisements costing Rs. 459.10 lakhs in 2019–20 and Rs. 577.89 lakhs in 2020–21, up until August 2020, the plaintiffs have incurred substantial promotional expenses.

3)      The trademark "Rooh Afza" was first registered in relation to these articles on August 3, 1942, and the plaintiffs have meticulously pinpointed the exact years of registration. The registration is active to this day. The product/sharbat of the plaintiffs was marketed for a century in bottles under the trademark "Rooh Afza," including an original colour scheme, layout, setup, and element arrangement—most notably, a one-of-a-kind and distinctive flower arrangement.

JUDGEMENT

The single bench judgement held that, the plaintiff sought an injunction on the grounds that customers could get confused because the terms "Dil" and "Rooh" both indicate "deep emotion," and the word "Afza," which means "adding" or "increasing," is shared by both of them. To avoid much confusion for a consumer, the marks are significantly different even though the suffix is same. Seeking an injunction based on word meaning similarity rather than word similarity itself appears to go beyond trademark protection's purview of preventing confusion and resemblance. It is unrealistic to expect the average consumer to understand the significance of a product's mark when they buy it. The goal of trademark protection is to prevent a rival from unfairly benefiting from the use of a mark that sets a company's goods or services apart. It is apparent that the protection does not extend to safeguarding the mark's meaning. The ruling stated that while "Rooh Afza" and "Dil Afza" are both registered trademarks, the exclusive right to use cannot be imposed upon one another. It was also taken into consideration that Hamdard had a right over the whole word ‘ROOH AFZA’ and not on the separate words and thus according to the ruling, the defendant's and plaintiff's marks are different. The plaintiff's plea was denied as it was decided that "there cannot be a confusion being created on account of the meaning of the two words and similar suffix."

However, this decision was appealed by the plaintiff in the High Court where it was decided that, "Rooh Afza" is a strong mark, it requires strong protection. This is because stronger marks are more likely to be the target of piracy, which aims to take unfair advantage of their well-earned reputation.
The Court then pointed out that the term "Rooh" implies soul and the word "Dil" means heart, citing the rule of dominant feature. Since both of these words, from the perspective of an average intelligent person, are employed to provide a shared conceptual foundation, they significantly contribute to the customers' overall perception of the commercial. Additionally, the Court accepts the anti-dissection rule's logic and observes that "Dil Afza" and "Rooh Afza" give off misleadingly similar impressions. Since the syllable "Afza" is the same in both the contested trademark and the trademark "ROOH AFZA," Afza plays a significant role in the overall commercial impression of both. Additionally, because the product in question is inexpensive, consumers are likely to give it a "cursory" glance, increasing the likelihood that they will purchase a “deceptively similar” product. Because the term "Afza" literally has nothing to do with sweet beverages (the product), the respondents are unable to utilise it without violating the trademark. Since the brand has gained goodwill over many years, the name "Afza" has essentially come to refer to the product in question. As such, it is entitled to protection under trademark law as a key component of the mark in dispute.

CONCLUSION

A division bench of the Delhi High Court, considering these points of view, reversed the single bench's decision and issued an interim injunction in favour of Hamdard Laboratories, prohibiting the maker of drinks and syrups from violating its 100-year-old registered "ROOH AFZA" brand. Even though it is impossible to profit unfairly from the goodwill generated by a strong trademark, it becomes urgent to safeguard one. In order to achieve the same goal, two tests have been established by legislation and court rulings; the law was never meant to adhere to one regulation in its entirety and ignore the other. You will only get inconsistent and unjust outcomes if you do this. Only by balancing the two tests and taking a realistic approach to the usefulness of the impression that is made in the minds of the customers while they purchase the products will the conundrum of whether the contested park is "deceptively similar" to the original trademark be solved. The Rooh Afza case is a positive start towards adopting a more comprehensive perspective on the two tests and a practical methodology to determine what constitutes a “deceptively similar” mark, thereby safeguarding a powerful mark from infringement.