Case Study: HAMDARD NATIONAL FOUNDATION (INDIA) & ANR. Versus SADAR LABORATORIES PVT.LIMITED

In one of the recent prominent litigation in the field of trademark titled as HAMDARD NATIONAL FOUNDATION (INDIA) & ANR. Versus SADAR LABORATORIES PVT.LIMITED, tests the boundaries of the protection being provided by the registered trademark to its user in the course of trade and commerce. This case is famously known as ‘ROOH AFZA Versus DIL AFZA case’ and one of its kinds that predominantly deals with the protection sought for each and the separate word used in the registered trademark.

BRIEF INFORMATION OF THE PARTIES INVOLVED IN THE LITIGATION

The HAMDARD NATIONAL FOUNDATION (INDIA) is a charity organization that was founded by Hakeem Abdul Hameed in the year 1906 and engaged in the business of manufacturing and distributing among other things Unani and Ayurvedic Medicines, oils and non-alcoholic drinks. One of its well-known trademarks is ‘ROOH AFZA’ Sharbat/ syrup which has a wide market presence and is well recognized by its consumers. Hereinafter called as Plaintiff Company.

On the other side, SADAR LABORATORIES PVT. LIMITED has been engaged in the business of manufacturing and distributing Unani Medicines, oils since the year 1949 through its parent company M/s. Sadar Dawakhana. Hereinafter called as Defendant Company.

Brief Facts of the Case:

1. The present case deals with the allegations as to infringement of trademark, degradation, dilution, tarnishing and damage to brand reputation and brand equity of the well-known trademark of ‘ROOH AFZA’ very populous Sharbat/ syrup available in the market which owes its inception to HAMDARD NATIONAL FOUNDATION (INDIA) i.e. the plaintiff company. The present suit was filed by the plaintiff company against the defendant company contending the abovementioned allegations as the defendant company had engaged in the distribution of sharbat/ syrup on the shelf of market place under the brand name of ‘DIL AFZA’; which according to the plaintiff company was deceptively similar or identical to its product’s brand name i.e. ‘ROOH AFZA’and moreover such imitation by the defendant company tends to create confusion and ambiguity among the general masses in the market place.

Contentions of plaintiff side:-

1. That the defendant company had proceeded in its actions in order to cause damage and degradation to the brand equity of the products of the plaintiff company.
2. That the plaintiff company had spent Rs. 459.10 Lacs in the financial year 2019-20 in order to build its brand value and trust among the consumers in the market and further generated the revenue of Rs. 30983.57 Lacs in the financial year 2019-20; but the actions of the defendant company are proving to be inimical to the brand reputation of the plaintiff company.
3. That the plaintiff company is engaged in the business of producing and distributing its products i.e. Sharbat/ syrup under the brand name ROOH AFZA for a period of a century and got its trademark registered on August 3^rd, 1942 underclass 5 along with its unique colour scheme, layout, set-up and whereas the defendant company was engaged in the business of producing and supplying medicines since 1949 under class 32 and in the year 2018 applied for the registration under class 5 for the manufacturing and distribution of Sharbat/ Syrup under the brand name ‘DIL AFZA’.
4. The plaintiff company also contended that its trademark is a well-known trademark that duly complied with all the criteria of a well-known trademark under section 2(1) (zg) of The Trademark Act, 1999.
5. The plaintiff company further heavily relied upon the contention that the defendant company cannot use the words DIL AFZA as its meaning is deep emotions which is similar or identical to the brand name ‘ROOH AFZA’ which is a well-known trademark of the plaintiff company. Thus this fact can cause ambiguity or confusion among the public in the marketplace.

Defense of the defendant company:-

1. The defendant company contends that no suit for infringement of a trademark is made out under section 29 of The Trademarks Act, 1999 as both the marks i.e. ROOH AFZA as well as DIL AFZA are duly registered trademarks.
2. Further, the defendant company contends that it has been using the brand DIL AFZA for a long time from 1949 under class 5. Additionally, in its counter-statement, it also brought up that the proper brand name of the plaintiff company is Hamdard in addition to the brand name ROOH AFZA which has become an eminent mark and not alone ROOH AFZA and further that the word AFZA is being widely used in the Sharbat/ Syrup business by the number of traders and hence the plaintiff company cannot acquire monopoly upon the word AFZA.
3. The defendant company also stated that the plaintiff company had not acquired separate registration for the words ROOH and AFZA. In the same manner, the defendant had got registration of words DIL AFZA. Therefore the plaintiff cannot enforce its sole proprietorship upon the word AFZA.
4. Furthermore, the appearance, label, and packaging of the product of the defendant is unique and distinct from the products of the plaintiff as the label of the plaintiff’s product is equipped with flowers but on the other hand, the label of the defendant is equipped with fruits, monogram and the manufacturer name Sadar. So, all these distinct features are not likely to cause any confusion in public with regard to the manufacturer of the products.
5. Moreover, the meaning of the words is entirely different as the meaning of the word ROOH is spirit and on the other hand, the word DIL means heart. Thereby the plaintiff cannot claim its ownership or right to use the brand name in a monopolistic manner. Apart from this, the defendant also stated that the trademark registration only protects the physical, visual as well as phonetic representation, appearance, sound of the brands and not that the meaning of the brand otherwise no other person or organization would be able to get their products registered under trademark registration.

Judgment:-

The judgment in the present case states that both the marks i.e. ‘ROOH AFZA’ and ‘DIL AFZA’ are registered trademarks so the exclusive right to use could not be enforced against each other. Further, the judgment also states that both the marks are distinct and not similar to each other thus negating the contentions raised by the plaintiff company.It held that “there cannot be a confusion being created on account of the meaning of the two words”, thus rejecting the plaintiff’s plea holding that ‘DilAfza’ and ‘RoohAfza’ were not identical and also that the plaintiff could not establish their claim of exclusive use of the term ‘Afza’.

NITIN GUPTA

Trademark Attorney