On January 6th 2022, the Delhi High Court analyzed in Rooh Afza vs Dil Afza, Can Two Registered Identical Trademarks Claim Exclusivity. In trademark litigation, it is well established that when it comes to the registration of product names, the whole trademark/phrase or the ‘full name’ what’s considered protected by the act, not the individual words that constitute it. In the case, the counsel for the defendant, keeping the synonymity of the two names in view, attempted to stray from the usual understanding of a trademark to widen the scope of infringement.
The plaintiff company "Hamdard" is the maker of the popular drink "Rooh Afza", a refreshing syrup-based drink that was registered in 1942. The plaintiff filed a suit seeking a permanent injunction against the defendant ‘Sadar Laboratories’ for their product “Dil Afza”, another syrupbased refreshing drink. The plaintiffs alleged that the defendant’s drink had a deceptively similar mark, unique getup, and design manufactured with the malafide intention to tarnish their popular trademark. In addition to that, despite claiming that the product was “in-use” under class 5 since 1949, the product was only registered under class 32 i.e. medicines till the defendant sought registration of “Dil Afza” under class 5 in 2018.
As the plaintiffs claimed infringement, the defendants opposed the claims on various grounds. It was said that not only was their product registered and 'in use' since 1949, but the word "Afza" is also common in the sharbat trade. In addition to that, they stated that the suit was to be stayed because of rectification proceedings under Section 124 of the Trademarks Act, 1999. The court, considering the arguments, dismissed the application and stayed the case pending its final disposal.
Though the bench acknowledged the plaintiffs' vast reputation in respect of their trademark 'Rooh Afza’, it held that the whole name being ‘well-known’ cannot be used to prove that the word “Afza” specifically referred to the defendant’s drink. Meaning, the word itself did not acquire a secondary meaning. However, it can be seen that instead of determining how exclusively the suffix of a registered mark can be used, the bench has mainly relied on the harmonious coexistence of the drinks and assessed the potential confusion in the public at large. Secondly, the bench referred to section 28 of the TMA, 1999 that states:
Where two persons are registered proprietors of trademarks that are identical or nearly resemble each other, their exclusive right to use any of those trademarks cannot be enforced against each other.Keeping the wait for the outcome of the rectification proceedings aside, it is unclear why the court did not take into account the gap in the time period for registering “Dil Afza” under class 5. Under a similar pretence, the case Kumar Milk Foods v Vikas Tyagi highlighted the importance of a specific classification of goods for determining exclusivity. More clarity on these aspects is anticipated in the final proceedings of the case.
 2013 ( 55 ) PTC 469 ( Del )