The Supreme Court of India (“SC”) refused to stay the Delhi High Court’s (“Delhi HC”) Order restraining Sadar Laboratories Private Limited (“Sadar Lab”) from manufacturing and selling products under the trademark ‘Dil Afza’.
On 18th May 2023, a three Judges Bench headed by Chief Justice DY Chandrachud dismissed a Special Leave Petition filed by Sadar Lab challenging the Delhi HC’s Order restraining Sadar Lab from manufacturing and selling products under the trademark ‘Dil Afza’ until the disposal of the trademark infringement suit filed by Hamdard National Foundation (“Hamdard”), the manufacturer ‘Rooh Afza’ sharbat.
In December 2022, while hearing an appeal filed by Hamdard, a Division Bench of the Delhi HC restrained Sadar Labs from manufacturing or selling products under the trademark ‘Dil Afza’. The appeal was against a Single Judge’s decision to refuse an interim injunction against the use of the trademark ‘Dil Afza’ by Sadar Lab.
On December 15, 2020, Delhi HC Single Bench ruled that even though ‘Rooh Afza’ had acquired a secondary meaning as a product from Hamdard, the word ‘Afza’ by itself could not be the deciding factor of confusion between the trademarks ‘Rooh Afza’ and ‘Dil Afza’.
While deciding in favor of ‘Rooh Afza’ in the appeal, the Hon’ble Division Bench considered the following factors which every business should keep in mind while formulating their branding strategy.
First, ‘Dil Afza’ had certain phonetic similarities with ‘Rooh Afza’ since the trademarks ended with the word ‘Afza.’ The last syllables, which formed the majority of the syllables, were thus similar.
Second, the word ‘Afza’ was a significant part of the trademark ‘Rooh Afza’. It was a contributing feature to the overall commercial impression of the trademark ‘Rooh Afza’ as well as the trademark ‘Dil Afza’.
Third, “if recall from memory is triggered by the English meaning” of the words ‘Rooh’ (which means Soul) and ‘Dil’ (which means Heart), the fact that heart and soul were commonly used phrases, provides a common conceptual background.
Fourth, the trade dress, which included the shape and the overall design of the bottle, the placement of the house mark (‘HAMDARD’ and ‘SADAR’), and the “colorfully busy design of the label,” contributed to the similarity in the overall commercial impression of the competing trademarks.
Fifth, the value of the product. The product was a consumable item and a low-priced product. Thus, the attention that the customer might devote to the product on a shelf or in an online marketplace would, at best, be brief and quick. It was not expected that the average customer would deliberate on the details of the product as one would do while taking a high-value investment decision.
Thus, the Delhi HC Division Bench decided the commercial impression of the trademark ‘‘Dil Afza’ was deceptively similar to the ‘Rooh Afza’ trademark. The Division Bench compared the commercial impression while considering the confusing similarity between competing marks.
The Supreme Court was not inclined to entertain the Special Leave Petition under Article 136 of the Constitution of India and dismissed the Petition for Special Leave to Appeal.
[Sadar Laboratories Pvt Ltd v Hamdard National Foundation (India) | SLP(C) No. 9494/2023]