Author- Nandini Bhagat
INTRODUCTION
The presented dispute is in the case of Hamdard National Foundation (India) V. Sadar Laboratories Pvt Ltd
- Facts of the case
In the present trademark dispute, Hamdard National Foundation (India) is the first plaintiff while Hamdard Dawa Khana also known as Hamdard Laboratories (India) can be considered as the second plaintiff. For almost more than a century, Plaintiff is known to manufacture and market various Ayurvedic medicines, oils, and non-alcoholic beverages and is the owner of the presented trademark “Hamdard” which is used in most of the goods and services offered by the group. It is claimed by the plaintiffs that “Hamdard” is a well-known brand now and is marked as an identity of the Hamdard Group and its products and services.
In an appeal filed by the plaintiffs challenging the order passed by the single judge bench against the rejection of the trademark infringement suit and further asking for permanent injunction restraining the respondent (Sardar Laboratories) from using the trademark “Sharbat Dil Afza” which is similar to the trade mark used by the appellants “Rooh Afza”.
The plaintiffs also filed an application for an ad-interim injunction under Order XXXIX Rules 1 and 2 read with Section 151 Civil Procedure Code.
- Issues Involved
- If using the defendant’s trademark for comparable goods will cause an infringement of the plaintiff’s products or cause confusion about the source of the product among the general public.
- Whether or not the court has the jurisdiction to issue orders under Section 124 (5) of the Trademarks Act.
- Arguments
Submission made by Appellant – Appellant claimed that Defendants were misrepresenting their products as being from Plaintiffs by utilizing the name “Dil Afza” while violating their well-known trademarks “Hamdard” and “Rooh Afza.” Plaintiffs assert that they acquired their trademark “Rooh Afza” and “Hamdard” under Class 5 in 1942 which is still in effect today.
The appellant’s counsel asserts that the name “ROOH AFZA” was a well-known mark with significant goodwill associated with sharbat’s (non-alcoholic sweet beverages). The appellants learned of the respondent’s introduction of its sharbat carrying the mark “DIL AFZA” in 2020 from an advertisement in a daily newspaper. The appellants asserted that the trademarks “DIL AFZA” and “ROOH AFZA” were confusingly similar to one other. Additionally, the product’s trade dress and design, especially the bottle that the respondent employed, were misleadingly similar to those of the appellants’ product.
Submission made by respondent – The respondent claimed that since 1949, its Unani medicines and Unani medicinal syrups, as well as its syrups and beverages, have been sold under the aforementioned contested trademark. Additionally, it was asserted that the respondent combined the distinct words “DIL” and “AFZA” to create the trademark in question. These words, which translate to “heart” and “increasing”/”giver of plenty,” are from the vocabulary of the Urdu language. They own the composite mark “ROOH AFZA,” and the appellants could not assert any exclusive rights over the word “AFZA.” No exclusive right to use any portion of the mark “ROOH AFZA” was granted by the registration of the mark.
- Judgement
The Single Judge came to the conclusion that, on the basis of the evidence presented, the appellants’ assertion that they have established significant goodwill and repute in regard to the trademark “ROOH AFZA” cannot be disproved. As a result, it was decided that the appellants could only assert their exclusivity rights with regard to the entire trademark “ROOH AFZA,” not only the two words “ROOH” and “AFZA,” which made up the trademark.
The Court stated that it was not difficult to imagine that someone looking at the label DIL AFZA may remember the label ROOH AFZA because “AFZA” was a common word and “ROOH” and “DIL,” when translated into English, had a common connotation of “together.” Additionally, it was stated that “the commercial impression of the impugned trademark was confusingly similar to the appellant’s trademark and, at first glance, the appellant’s mark was a strong mark, and the requirement of protection varies inversely with the strength of the mark; the stronger the mark, the higher the requirement to protect the same.” The court also compared the two labels.
The Court stated that it is evident that the trade dress of the two products is identical. The fact that both bottles are clear and the liquid color is the same would surely add to the impression of the product that any consumer may recall. Both items have the same deep red color, texture, and overall impression.
In light of this, the Court decided that the appellant’s mark needed a high level of protection and that it was crucial to make sure that the competitors stayed well away from the claimed mark. As a result, the Court overturned the Single Judge’s decision and declared that the prior interim injunction was final and would stand until the case was resolved. The Court further ordered that the respondents should cease the sale of their product under the name of “Dil Afza” until the case is resolved.
