Point of Law: Section 124 of the Trade Marks Act, 1999, when rectification proceedings are pending, the suit has to be stayed, pending final disposal of such proceedings.

ORDER :

I.A.12032/2020 (by the plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151 CPC for grant of ad interim injunction)

1. This order will dispose of the application [I.A.12032/2020] under Order XXXIX Rules 1 and 2 CPC filed by the plaintiffs along with the suit seeking permanent injunction, restraining the defendant from infringing their registered trademarks and seeking protection against disparagement, dilution and tarnishment of trademarks, damage to reputation and tarnishment of brand equity and damages.

2. The plaintiff No.1 is Hamdard National Foundation (India), a charitable institution registered under the Societies Registration Act, 1860 and the plaintiff No.2 is Hamdard Dawakhana, also trading as Hamdard Laboratories (India) which is a business held in trust, earlier trading as Hamdard Dawakhana (Wakf). The Plaintiffs are engaged in the business of manufacturing and selling inter alia, Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic beverages for over 100 years.

3. The defendant company/Sadar Laboratories Pvt. Ltd. since the year 1949, through its predecessor, M/s. Sadar Dawakhana, is also engaged in the business of manufacturing Unani medicines, syrups and botanical products.

4. The present case has been filed on the ground that the defendant was not only infringing the well-known trademark of the plaintiffs in ‘Hamdard’ and ‘Rooh Afza’ but was also passing off its products as those of the plaintiffs by using the name ‘Dil Afza’. The plaintiffs claim that they had acquired immense reputation and goodwill in relation to ‘Rooh Afza’ and the value of the sales had reached Rs.30983.57 lakhs in 2019-20 and Rs.16,281.41 lakhs in 2020-21 (till August 2020). Heavy promotional expenses have been incurred by the plaintiffs, as reflected in their spending of Rs.459.10 lakhs in the year 2019-20 in advertisements and Rs. 577.89 lakhs in 2020-21, upto August, 2020.

5. It is further claimed that the word ‘Rooh Afza’ was used in several products of the plaintiffs as listed in the plaint/application. The plaintiffs have also set out in detail, the years since when the trademark ‘Rooh Afza’ in relation to these products had been registered, the first one being on 3rd August, 1942. The registration continues to be valid even now. The product/sharbat of the plaintiffs sold under the trademark ‘Rooh Afza’ in bottles, has a unique colour combination, layout, get-up and arrangement of features, particularly, a unique and distinct floral arrangement.

6. It is alleged that in the month of March, 2020, the plaintiffs came to know that the defendant had issued an advertisement launching its syrup/sharbat, bearing the mark ‘Dil Afza’ in deceptively similar ringlet bottles as that of the ‘Rooh Afza’ bottle. The defendant had with mala fide intention, also adopted a deceptively similar mark, unique get-up, and design for its product. An application for registration of the mark ‘Sharbat Dil Afza’ in the name of the defendant seems to have been filed on 10th June, 2018 on the basis of ‘proposed to be used’. Another application was filed on 4th July, 2018, claiming ‘user’ since 1949. The plaintiffs claim that it was due to oversight that this application could not be opposed by the plaintiffs and therefore, the defendant has been granted registrations in respect of the mark ‘Sharbat Dil Afza’.

7. Mr. S.P. Singh, learned counsel for the plaintiffs, submitted that in the circumstances set out hereinabove, clearly the defendant was liable to be injuncted. It was submitted that the defendant had been using its trademark for medicines i.e., in Class-32, whereas, in 2018, it had sought registration in Class-5 claiming to have been in use of the said trademark for medicines since 1949. However, the drugs licence had been obtained only in 1976, whereas the plaintiffs have been producing and marketing their product/sharbat under the name ‘Rooh Afza’ since 1907 and had obtained the first registration of its trademark in 1942. It is fu