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IN THE HIGH COURT OF DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Hamdard National Foundation (India) - Appellant
Versus
Sadar Laboratories Pvt. Ltd. - Respondent
FAO(OS) (COMM) 67 of 2022 and CM No. 13491 of 2022
Decided On : 21-12-2022
Court emphasized that the assessment of trademark confusion must consider the overall commercial impression, rejecting claims of similarity between 'ROOH AFZA' and 'DIL AFZA'.
Headnote:(A) Trade Marks Act, 1999 - Section 2(zg) - Code of Civil Procedure, 1908 - Order XXXIX Rules 1 and 2 - Appeal against rejection of interim injunction application for trademark infringement - Appellants sought to restrain usage of similar trademark ‘SHARBAT DIL AFZA’ by respondent - Court determined trademarks ‘ROOH AFZA’ and ‘DIL AFZA’ are not confusingly similar due to their phonetic, visual, and conceptual distinctions. (Paras 22, 25, 71)
(B) Prima facie case - Plaintiffs claiming goodwill in ‘ROOH AFZA’ - Court differentiated between distinct and composite trademarks, emphasizing full marks should be considered. (Paras 20, 40, 71)
(C) Confusion analysis - Court affirmed consideration of consumer perception and the mental associations of the terms - Overall impression of trademarks found to be similar - Advertising prominence and market recognition discussed. (Paras 22, 56, 67)
(D) Result - Appeal allowed. Respondent restrained from using ‘DIL AFZA’ until further suit proceedings.
| Table of Content |
|---|
| 1. background involving trademark conflict (Para 1 , 2 , 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10) |
| 2. respondent's defense and trademark validity (Para 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19) |
| 3. impugned order and initial court evaluation (Para 20 , 21 , 22) |
| 4. court's reasoning on similarity and confusion (Para 23 , 24 , 25 , 26) |
| 5. factors in determining trademark confusion (Para 27 , 28 , 29 , 30 , 31) |
| 6. importance of word meanings and commercial impression (Para 32 , 33 , 34 , 35) |
| 7. analysis of secondary meanings and market presence (Para 36 , 37 , 38 , 39 , 40) |
| 8. trade dress considerations (Para 41 , 42 , 43 , 44) |
| 9. impact of meanings and mental connections (Para 45 , 46 , 47 , 48) |
| 10. historical precedents in trademark law (Para 49 , 50 , 51 , 52) |
| 11. commercial impression of trade dress and confusion potential (Para 53 , 54 , 55 , 56 , 57 , 58 , 59 , 60) |
| 12. strength and protection of trademarks (Para 61 , 62 , 63 , 64 , 65) |
| 13. conclusion leading to the appeal's resolution (Para 66 , 67 , 68 , 69 , 70) |
| 14. final decision and order of the court (Para 71 , 72) |
JUDGMENT
Vibhu Bakhru, J.
Introduction
1. Hamdard National Foundation (India) and Hamdard Dawakhana, also trading as Hamdard Laboratories (India) - Food Division, have filed the present appeal impugning an order dated 06.01.2022 (hereafter `the impugned order') passed by the learned Single Judge, whereby the appellants' application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (being I.A. 12032/2020 in CS (COMM) 551/2020 captioned Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Limited), seeking an interim injunction against the respondent, Sadar Laboratories Pvt. Ltd. (hereafter `the respondent'), from infringing the appellants' registered trademarks, was rejected.
2. The appellants have filed the aforementioned suit, CS(COMM) 551/2020, inter alia, seeking a permanent injunction restraining the respondent from using the trademark `SHARBAT DIL AFZA', which, the appellants claim, is deceptively similar to the registered mark `ROOH AFZA'. The appellants claim that use of the impugned trademark `SHARBAT DIL AFZA'/ `DIL AFZA' is likely to cause confusion and amounts to infringement of the registered trademark `SHARBAT ROOH AFZA'/ `ROOH AFZA'. The appellants further claim that use of the said mark, in respect of any goods, particularly syrups/sharbats, is intended to deceive customers; constitutes unfair competition; would result in dilution of the trademark `ROOH AFZA'; and amounts to passing off.
3. The controversy, in the present case, relates to the word trademark `SHARBAT DIL AFZA' (hereafter also referred to as `the impugned trademark'), which is registered in favour of the respondent in Class 5 as well as Class 32. The particulars of the said registrations are set out below:
| S. No. | Trade Mark | Registered Trade Mark Number & Class | Goods | Validity |
| 01 | SHARBAT DILAFZA | 3855931 in Class 32 | Syrups and Beverages | Registered and Valid Upto 10.06.2028 |
| 02 | SHARBAT DILAFZA | 3878751 in Class 5 | Unani Medicines and Unani Medicated Syrups | Registered and Valid upto 04.07.2028 |
4. The appellants claim that the trademark `SHARBAT ROOH AFZA' has been used continuously since the year 1907 in respect of a sweet beverage concentrate, manufactured and sold by the appellants. The respondent has recently launched a similar product (sweet beverage concentrate) under the brand name `SHARBAT DIL AFZA'.
Appellants' case
5. The appellants state that they are engaged in the business of manufacturing and selling Unani and ayurvedic medicines, oils, syrups and non-alcoholic beverages amongst other products for over a century. They claim that they trace their history as far back as the year 1906, when Hakeem Hafiz Abdul Majeed, a Unani practitioner, had set up a Unani clinic under the name of `HAMDARD DAWAKHANA'. Appellant no.1 is the owner of the trademarks `HAMDARD' and `ROOH AFZA', which are used in respect of a large number of goods and services offered by
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