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Battle between the heart and soul of the sharbat industry!

April 18, 2022

By Pranit Biswas and Girishma Sai Chintalacheruvu

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

Most of us in India have likely encountered the famous sharbat Rooh Afza, that reddish cool beverage which invokes so many childhood memories, in our lives. The fame and notoriety of the said drink is such that for many, a blind tasting would likely lead to utterances of the name/mark Rooh Afza by most! However, sentiment aside, the High Court of Delhi recently faced a test of its own – to adjudicate between beverages named Rooh Afza and Dil Ahfza.

The High Court of Delhi on January 06, 2021 dismissed an application seeking permanent injunction filed by the manufacturers of the famous beverage ‘Rooh Afza’, against the manufacture and sale of another similar drink sold under the name ‘Dil Ahfza’. The plaintiffs prima facie alleged that Dil Afza was an attempt to pass off and ride on the goodwill acquired by Rooh Afza, which is essentially a concentrated herbal squash drink which gained much popularity in India since as early as 1915. However, the Court disposed the suit by inter alia upholding the conceptual difference that lies in the names of both the drinks – ‘Dil’ meaning heart, and ‘Rooh’ meaning soul.

At the outset, readers may also agree with the contention that Rooh Afza has indeed gained immense popularity in the Indian market, however, the rationale given by Hon’ble Ms. Justice Asha Menon for disposing the application despite Rooh Afza’s fame, piques the interest of a true IP enthusiast and makes this case worth a read.

Brief background of the case

The present commercial civil suit was filed by Hamdard National Foundation (Plaintiff 1) and Hamdard Dawakhana (Plaintiff 2) against Sadar Laboratories Private Limited (Defendant). Both the parties to the suit are rather famous Indian companies, engaged in the production and distribution of various products that are concocted based on the principles of Unani medicine and Ayurvedic sciences. While the plaintiffs have been in the business since 1906, the Defendants had entered the same market in 1949, their product line primarily involving syrups, medicines and botanical products. In the instant case, the products under inspection are the herbal concentrate drinks ‘Rooh Afza’ and ‘Dil Afza’.

Plaintiff’s submissions

While the main contention of the Plaintiff was that ‘Rooh Afza’ as well as ‘Hamdard’ were well-known trademarks, in support of the same, they claimed that:

  • The use of the name Dil Afza amounted to infringement as well as passing off of Rooh Afza
  • The product packaging of Rooh Afza includes a unique colour combination, layout get-up and arrangement of features, particularly the red colours and the floral design therein.
  • That the defendants launched their product, Dil Afza in the month of March 2020, wherein it was found that the packaging of Dil Afza was similar to that of Rooh Afza, wherein the fashion of ringlets were also incorporated.
  • That the defendant adopted a deceptively similar name in respect of their product with mala fide intentions, and has imitated the design of their bottle.
  • Further, the plaintiffs also placed reliance on the trademark applications filed by both the parties, wherein it was asserted that the plaintiffs have been producing and marketing Rooh Afza since 1907 and had obtained their first trademark in 1942. On the contrary, the defendants had filed an application only on June 10, 2018 on a proposed to be used basis and subsequently, another application was filed on July 04, 2018, wherein the defendants claimed use since 1949.
  • Nevertheless, the plaintiffs admitted that the applications filed by the defendants could not be opposed out of inadvertence, and hence have sought for a recourse by filing the present suit.
  • Additionally, the plaintiffs also placed reliance on the matter of Unani Dawakhana v. Hamdard Dawakhana, 1930 SCC OnLine Lah 300, wherein the mark Rooh Afza was granted the status of being a well-known trade mark by the High Court of Lahore.

Defences taken by the Defendants

The counsel for the defendant primarily put forth their arguments on the ground that the term ‘Afza’ was common to the trade and could not granted exclusivity. Additionally, in support of the same, it was contended that:

  • Firstly, the suit for infringement did not lie within the purview of Section 19 of the Trade Marks Act, 1999, which inter alia refers to the revocation of the acceptance of a trade mark application, before registration.
  • In addition to the contention that Afza was a term that was common to trade, the counsel for the defendants pointed out that it was for this very reason that the product of the plaintiffs in the plaint, has been referred to as “Hamdard Rooh Afza’ and not Rooh Afza alone.
  • The defendant further asserted that the product Dil Afza was in the market since 1949, and had been in use in Class 5 since then. He pointed out that Rooh Afza has been in the trade during the same timelines, however no scope of confusion has arisen in all these years, up until the year 2020.
  • Additionally, the defendant counsel added that the entities of both the parties are active members of the Unani Drug Manufacturers Association, and are very much aware of each other’s existence in the trade.
  • Thus, it was contended that there was no mala fide intentions involved in the adoption of the name/mark ‘Dil Afza’.
  • The defendant counsel also drew parallels between the meanings of both the products, wherein it was asserted that there exists no scope of confusion even with the commonality of the word Afza as the words Rooh, meaning ‘spirit/soul’ and the word Dil meaning ‘heart’ created sufficient scope of distinction between both products.
  • Lastly, the defendant counsel asserted that the plaintiffs have failed in proving that the term ‘Afza’ has obtained a secondary meaning that is associated solely with the product ‘Rooh Afza’.

‘Rooh Afza’ is a well-known trademark

The Hon’ble Justice Ms. Asha Menon took into account the following observations before dismissing the application, directing the defendant to maintain a true account of sales of ‘Dil Afza’ during the pendency of the suit and submit to the court a quarterly report of the same:

  • That it is indeed a fact that the term ‘Rooh Afza’ is a well-known trademark and that based on the well-known status of Rooh Afza, the plaintiffs’ claims of building vast reputation cannot be refuted.
  • She stated that “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. Buying a bottle of sharbat may involve emotions, but not deep to the extent hoped for by the learned counsel for the plaintiffs.” And subsequently rejected the plea raised on behalf of the plaintiffs in relation to the confusion created by both these terms.
  • Further, with respect to the term ‘Afza’, the Court opined that since the plaintiffs had not sought and obtained registration for the exclusive use of the word ‘Afza’, exclusivity for the same cannot be claimed. It was however acknowledged that they may claim exclusivity for the whole term ‘Roof Afza’ and not for either of the terms individually.
  • Additionally, the Court observed that the concurrent existence of Dil Afza in Class 5, does not appear to be problematic, owing to the peaceful co-existence between both the parties. However, she added that “Even if the sharbat has been produced only since 2020, no case has been made out to restrain the defendant from marketing its sharbat under the name ‘Dil Afza’.”

Conclusion

One may argue that the turn of events in the instant case was unexpected, but the decision was very articulately and logically laid out by the Court. The order by Hon’ble Ms. Justice Asha Menon pays due attention to the tendency of claiming exclusivity over generic terms, and attempts to monopolize the market.

However, another line of thought may bring up to the surface, the contention that the terms involved in the instant case were subjects of the Urdu language. While ‘Rooh Afza’ is a product that has gained immense popularity across all sects and dialects of the country, and even across boundaries, where Urdu, or in-depth knowledge of Urdu terminologies may not be very prominent.

In the instant case, while it was in fact essential and logical to look into the generic term ‘Afza’ and ascertain that the same is common to trade, in practicality, it may be worth examining whether a person of average intellect, who is not as exposed to the Urdu language, indeed understands the generality of the term ‘Afza’ or whether the same has indeed gained a secondary meaning in association with Rooh Afza.

Nevertheless, on a lighter note, it may be worth reflect on the possibility of the instant case acting as a precedent to follow thy heart?

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