INTRODUCTION:
A trademark is a form of intellectual property that typically consists of a recognized mark, design, or another type of expression that distinguishes a product or service from those of others. When we think about protecting a trademark at the national or regional level, it can be obtained by filing an application for registration with the national/regional trademark office and paying the required fees. But at the international level, there are two options either filing a trademark application with the trademark office of each country in which the applicant seeks protection or by using the WIPO’s Madrid System.If a trademark is registered, it grants the owner an exclusive right to use it, or it can be licensed/ assigned to another party for use in exchange for royalties. The advantage of the registration of a trademark is that it provides legal protection and strengthens the position of the right holder by the action of enforcement, for example, in the event of litigation.
BACKGROUND OF THE CASE:
The case of HAMDARD NATIONAL FOUNDATION (INDIA) & ANR. vs. SADAR LABORATORIES PVT. LIMITED, also known as ROOH AFZA vs. DIL AFZA is a classic example regarding the protection sought for individual words used in a registered trademark (a phrase), wherein the individual words are commonly used in the particular product market. The plaintiff, in this case, Hamdard National Foundation (India), is a charity foundation created in 1906 by Hakeem Abdul Hameed that primarily focuses on disbursing the company’s revenues to advance the interests of society. The Hamdard company’s income has been dedicated entirely to its foundation for several years. For almost a century, the Plaintiffs have been making and distributing, among other things, Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic drinks. The defendant company/Sadar Laboratories Pvt. Ltd. has been in the business of making Unani medicines, syrups, and botanical items since 1949, through its progenitor, M/s. Sadar Dawakhana.
FACTS OF THE CASE:
1. The current lawsuit was brought because the defendant was not only infringing on the plaintiffs’ well-known trademarks in ‘Hamdard’ and ‘Rooh Afza,’ but also passing off its products as those of the plaintiffs by using the name ‘Dil Afza.’
2. The plaintiffs argue that they have built an enormous reputation and goodwill in respect to ‘Rooh Afza,’ with revenues of Rs.30983.57 lakhs in 2019-20 and Rs.16, 281.41 lakhs in 2020-21. (Till August 2020). The plaintiffs have expended significant promotional costs, as evidenced by their spending of Rs.459.10 lakhs in ads in 2019-20 and Rs. 577.89 lakhs in 2020-21, up to August 2020.
3. The plaintiffs have also identified the years in extensive detail when the trademark ‘Rooh Afza’ was initially registered about these items, the first being on August 3, 1942. Even today, the registration is still valid. The plaintiffs’ product/sharbat was sold under the trademark ‘Rooh Afza’ in bottles for a century, having a one-of-a-kind colour scheme, layout, set-up, and arrangement of elements, notably a unique and distinct flower arrangement.
ISSUES OF THE CASE :
1. Did the defendant infringe on the plaintiff’s trademark rights?
2. Is the defendant’s trademark registration is valid?
3. Whether the defendant’s trademark would confuse the consumers if used for similar products?
JUDGEMENT:
The judgment was pronounced on 6th January 2022. The crucial points of judgment are as follows:
The plaintiffs’ mark, ‘Rooh Afza,’ and the defendant’s mark, ‘Dil Afza,’ are both registered. A validly registered trademark grants the registered proprietor the exclusive right to use that trademark, subject to the exception that if two people are registered proprietors of trademarks that are identical or nearly identical, their exclusive right to use any of those trademarks cannot be enforced against each other.
Of course, the arguments have been that the defendant’s mark could not have been validly registered because it is similar to the plaintiffs’ trademark, which was registered in 1942 and for the same goods, namely ‘sharbat,’ and there is a likelihood of public confusion [11]
To that reason, the plaintiffs’ claim of having created a great reputation and goodwill in respect of their trademark ‘Rooh Afza’ cannot be dismissed even on a prima facie basis.
There is a lot of difference between the words ‘Rooh Afza and ‘Dil afza’ and also there is no identical mark.
The resemblance is desired because both ‘Dil’ and ‘Rooh’ evoke strong emotions, and both share the term ‘Afza.’ The criterion to be used in assessing confusion emerging in the mind is that of a consumer with imperfect recall or recollection and ordinary sensibility, as the courts have consistently found.
Even if the buyers were connoisseurs, it would be a stretch to imagine that the usage of the words ‘Rooh’ and ‘Dil’ would generate misunderstanding due to their profound emotional connotations. Purchasing a bottle of sharbat may elicit feelings, but not to the depths that the plaintiffs had hoped for. Those who appreciate this profound feeling, in any event, will be able to tell the difference between ‘Rooh’ and ‘Dil.’ We are concerned, however, with the average customer, for whom the terms ‘Dil’ and ‘Rooh’ do not mean the same thing in everyday usage. The meanings of the two terms cannot cause any mistake.
Also, to add the plaintiffs make no mention of applying for and receiving registration for the exclusive use of the term ‘Afza.’ As a result, the plaintiffs may claim exclusivity only for the full term ‘Rooh Afza,’ not for each of the two components that make up the trademark.
However, the application is rejected with a directive to the defendant to keep a truthful account of ‘Dil Afza’ sales.
CONCLUSION:
As a result, it is evident that the plaintiffs may only claim exclusivity over the full term ‘Rooh Afza,’ not the two words that makes up the trademark. In other words, the Hamdard foundation registered the trademark “ROOH AFZA” as a whole, not only “AFZA.” Despite the fact that DIL AFZA entered the market in 1976, there appears to have been harmonious coexistence with no misunderstanding in the minds of customers for such a long period in the more sensitive market of medicine. As a result, Dil Afza received a favorable verdict strengthening the conception around the combination of words used for trademark protection.
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