Rooh Afza v Dil Afza trademark war: Delhi High Court dismisses the case, meaning not confusingly similar

Rooh Afza v Dil Afza trademark war: Delhi High Court dismisses the case, meaning not confusingly similar

Dil Afza, meanwhile, has been sued by the manufacturers of Rooh Afza, who claim that the name Dil Afza is misleadingly similar to their product.

The words 'Dil' and 'Rooh' can be perplexing but not so deeply as to cause confusion when buying sharbat, the Delhi High Court said in dismissing an application filed by the manufacturers of Rooh Afza for an injunction against the sale of Dil Afza. [Hamdard National Foundation (India) and Anr v. Sadar Laboratories Pvt Ltd].

Justice Asha Menon handled a lawsuit filed by Hamdard National Foundation, the manufacturers of Rooh Afza, who argued their trademark has acquired a secondary meaning with sharbat and that this reputation has been built over a hundred years.

According to the lawsuit, another sharbat called Dil Afza (produced by Sadar Laboratories) is confusingly similar to Rooh Afza, and that the defendants have infringed on its trademark because the words 'Dil' and 'Rooh' sound similar. Additionally, the bottles in which the two products are sold are similar.

However, the Court held that it would be an extreme position to hold that the use of the words 'Dil' and 'Rooh' would cause confusion since they convey feelings of deep emotion.

"In the opinion of the plaintiffs' counsel, buying a bottle of sharbat can have some emotional implications, but not as deep as was hoped. Anyhow, those who understand this deep emotion would be the first to distinguish between 'Rooh' and 'Dil'. However, according to the ordinary consumer, 'Dil' and 'Rooh' do not mean the same thing in regular use. As a result of the distinction between the two words, there cannot be confusion. The Court has stated that this claim on behalf of the plaintiffs is not acceptable and should be rejected."

In the same case, the court held that since the word 'Afza' is not descriptive of the sharbat but rather refers to a deeper enjoyment of Rooh or Dil, to claim exclusivity on the term. The plaintiff had to demonstrate that it has built a reputation whereby the word would only mean Rooh Afza, which was not done in the existing case.

As 'Afza' is not a descriptive word for the sharbat but may mean, as explained by the attorneys for the plaintiffs, an increase in enjoyment, either of the 'Rooh' or the 'Dil', for the plaintiffs to be able to claim exclusivity to the word 'Afza.' They would show that they had built a reputation leading to the acquisition of a secondary meaning where 'Afza' denoted only the product made by the plaintiffs. Rooh Afza, which is the complete word, may, therefore, have acquired a secondary meaning, suggestive of sharbat produced by the plaintiffs, but Afza as a name does not appear to belong to that category," the Court held.

Thus, the Court refused to grant an injunction and stayed the suit until the Registrar of Trademarks determined if Hamdard's rectification application was valid.

Additionally, the defendants have been instructed to keep a record of sales of the 'Dil Afza' syrup throughout the pendency of the suit and to submit a quarterly report on the same to the Court.

Plaintiffs were represented by Advocates SP Singh and Sunil Mishra. In this case, the defendants were represented by Advocates NK Kantawala and Prakhar Sharma.