Delhi HC dismisses trademark infringement suit by Hamdard National Foundation; says it can claim exclusivity to complete name ‘Rooh Afza’ and not to either of two words that constitute trademark

Read Judgment: Hamdard National Foundation vs. Sadar Laboratories 

Pankaj Bajpai

New Delhi,  January 14, 2022: The Delhi High Court has held that Hamdard National Foundation (Plaintiff – Manufacturer/owner) has exclusive right over the word ‘Rooh Afza’ and not either of the two words constitute trademark. 

The Bench of Justice Asha Menon dismissed the application filed by the Plaintiff seeking to restrain Sadar Laboratories/defendant company from using their trademark ‘Rooh Afza’ however, with a direction to Defendant to maintain a true account of sales of ‘Dil Afza’ syrup/sharbat during the pendency of suit and to submit to the court, a quarterly report and account thereof, till the disposal of the suit.

Going by the background of the case, the first plaintiff was a charitable institution and the second plaintiff was Hamdard Dawakhana, also trading as Hamdard Laboratories (India) which is a business held in trust, earlier trading as Hamdard Dawakhana (Wakf). The Plaintiffs have been engaged in the business of manufacturing and selling inter alia, Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic beverages for over 100 years. The defendant company/Sadar Laboratories Pvt. Ltd. since the year 1949, through its predecessor, M/s. Sadar Dawakhana, was also engaged in the business of manufacturing Unani medicines, syrups and botanical products. 

The present case was 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’. It was further claimed that the word ‘Rooh Afza’ was used in several products of the plaintiffs as listed in the plaint/application. It was pleaded that 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. 

After considering the submissions, the High Court noted that the counsel for the defendant had no doubt stressed that ‘Afza’ could not be subject to exclusive use as there had been several sharbats using the name, ‘Afza’, which means “increasing; adding”, as per the Gem Pocket Twenty First Century Dictionary-Urdu to English (New Edition) compiled by M. Raza-ul-Haq Badakhshani, Khawaja Ejaz Rasool and M. Saqlain Bhatti and published by Kutub Khana Hamidia, Delhi. 

Since ‘Afza’ is not descriptive of the sharbat, but may signify, in keeping with the exposition of the counsel for the plaintiffs, an increase in deep enjoyment, either of the ‘Rooh’ or the ‘Dil’, in order to claim exclusivity to the word ‘Afza’, the plaintiffs would have to also show that they had built a reputation leading to the acquisition of a secondary meaning whereby ‘Afza’ would denote only ‘Rooh Afza’, being the product of the plaintiffs, added the Court.

Thus, Justice Menon highlighted that while ‘Rooh Afza’, that is the complete word, may have acquired a secondary meaning, indicative of sharbat produced by the plaintiffs, ‘Afza’ by itself does not appear to be of that category.

Next, it is to be seen whether the simultaneous use of ‘Dil Afza’ would prejudice the plaintiffs’ business, pointed out the single judge. 

Justice Menon admitted that in Class-5, relating to Unani/Ayurvedic medicines, the defendant has been using ‘Dil Afza’, and even if it is considered to have been in the market only since 1976, even then, for such a long time in the field of a more sensitive market of medicine, apparently, there has been peaceful co-existence with no confusion arising in the minds of the consumers. 

Even if the sharbat has been produced only since 2020, no case has been made out to restrain the defendant from marketing its sharbat under the name ‘Dil Afza’, concluded the Single Judge.