Context:  The Delhi High Court’s decision and views with respect to trademarks in its recent observations have gained significance as the protection of trademarks plays a key role in the protection of the interests of both the business entities as well as consumers.

Key Issue

• The Delhi High Court’s observation in the Hamdard National Foundation (India) v/s Sadar Laboratories Pvt. Ltd. case.

• The makers of “Rooh Afza” had filed an appeal against the rejection of its application seeking an interim order against Sadar Laboratories Pvt. Ltd. for their product “Dil Afza”. 

• The maker of “Rooh Afza” had said to the court that the trademark “Rooh Afza” is a reputed mark in the market with respect to sharbat (which is a sweet beverage) and had claimed that the product “Dil Afza” of the Sadar Laboratories was designed deceptively and similar to the trade dress of “Rooh Afza”.

• The High Court of Delhi in its observation has asked Sadar Laboratories to restrain from manufacturing and selling beverages under the trademark of “Dil Afza”. 

Trademark

• A trademark is a unique sign/indicator used by an entity to distinguish its goods or products or services from those of other business entities. 

• A trademark acts as a badge of origin which helps identify a particular business entity as the source of that particular good or product or service. 

• Trademark infringement refers to the unauthorised usage of a sign/indicator that is identical or deceptively similar to a registered trademark.

• In India, the Trademark Act of 1999 deals with the protection, registration and prevention of fraudulent use of trademarks. 

• Trademarks in India are governed by the Controller General of Patents, Designs and Trademarks which works under the Department for Promotion of Industry and Internal Trade (DPIIT).

Delhi Court’s observations

• A Division Bench of the High Court asked Sadar Laboratories Pvt. Ltd. to stop manufacturing and selling any product under the trademark “Dil Afza” until the final disposal of the trademark infringement suit. 

• The High Court further added that the trademark “Rooh Afza” had become a strong mark and had acquired immense goodwill which needed a higher degree of protection.

• Earlier, in M/s Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v/s M/s Shree Sita Chawal Udyog Mil case, the Delhi High Court had held that it is not permissible to copy a prominent part of the registered trademark of another person and had ordered the respondent, in that case, to restrain from using the trademark “Golden Deer” as it was deceptively similar to a registered trademark “Double Deer” with respect to rice.

What is a strong trademark?

• A trademark is considered to be strong when it is very well-known and has received a greater degree of goodwill. 

• The degree of the protection of any trademark changes with the strength of the mark i.e. stronger the mark, the higher will be the requirement to protect it. 

• For example: “Rooh Afza” has acquired more protection as it is more likely to be subjected to piracy as various other individuals/entities look to take undue advantage of its goodwill.

Rationale behind the Court’s Observations

• The disputed trademark “Dil Afza” has a phonetic similarity with “Rooh Afza”. 

• If a recall from memory is triggered by the English meaning of the terms “ROOH” meaning soul and “DIL” meaning heart, it provides a common conceptual background for both products. 

• Further, the trade dress of the disputed trademark, which consists of the bottle’s shape, the placement of the house mark, the design, and the colour of the design are all material contributors to the commercial impression of the competing trademark. 

• The value of the product was also taken into consideration as the court held that as the product is a low-priced consumable item general customers would not deliberate on the details of the product as compared to their tendencies while making a high-value investment choice.