Rooh Afza v Dil Afza trademark war: Delhi High Court says sharbat lovers can distinguish between the two

Buying a bottle of sharbat may involve emotions, but not so deep that the word ‘Dil’ can be confused with ‘Rooh’, the Delhi High Court said while dismissing an application filed by the manufacturers of Rooh Afza seeking an injunction on the sale of Dil Afza [Hamdard National Foundation (India) and Anr v. Sadar Laboratories Pvt Ltd].

Justice Asha Menon was dealing with a suit filed by Hamdard National Foundation, manufacturers of Rooh Afza, arguing that its trademark has obtained a secondary meaning with sharbat and this reputation has been built over a hundred years.

The suit stated that the sale of another sharbat by the name Dil Afza (manufactured by Sadar Laboratories) is deceptively similar to Rooh Afza and that the defendants have infringed on its trademark since the words ‘Dil’ and ‘Rooh’ have similar meanings. It was also stated that the bottles in which the two products are being sold, are similar.

The Court, however, held that it would be taking an extreme position to believe that the use of the words ‘Dil’ and ‘Rooh’ would cause confusion because they connote deep emotion.

“Buying a bottle of sharbat may involve emotions, but not deep to the extent hoped for by the learned counsel for the plaintiffs. In any case, those who appreciate this deep emotion would be the first to be able to distinguish between ‘Rooh’ and ‘Dil’. However, we are concerned with the common consumer, to whom, in ordinary use of the words, ‘Dil’ and ‘Rooh’ do not denote the same thing. There cannot be a confusion being created on account of the meaning of the two words. This plea raised on behalf of the plaintiffs deserves rejection and is rejected,” the Court has said.

It was also held that since the word ‘Afza’ is not descriptive of the sharbat but signifies an increase in deep enjoyment either of ‘Rooh’ or ‘Dil’, in order to claim exclusivity on the word ‘Afza’, the plaintiff had to show that it has built a reputation whereby the word would only mean Rooh Afza, which was not done in the present suit.

“Since ‘Afza’ is not descriptive of the sharbat, but may signify, in keeping with the exposition of the learned 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. Thus, 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,” the Court held.

The Court, therefore, refused to grant injunction and stayed the suit till the Registrar of Trademarks disposed of the rectification application filed by Hamdard on the issue.

The defendants have also been asked to maintain an account of sales of the ‘Dil Afza’ syrup during the pendency of the suit and to submit to the Court a quarterly report on the same till the case is disposed of.

Advocates SP Singh and Sunil Mishra appeared for the plaintiffs. The defendants were represented by Advocates NK Kantawala and Prakhar Sharma.

[Read Order]