Rooh Afza vs Dil Afza: Trademark Dispute

Recently, the Delhi High Court in Humdard National Foundation vs Sadar Laboratories refused to give an injunction against the defendant’s trademark ‘Dil Afza’. The case was filed by the plaintiff alleging that the defendant’s trademark is deceptively similar to their trademark ‘Rooh Afza’. Both were sharbat products. The court negated the plaintiff’s contention and held that the ‘Rooh Afza’ and ‘Dil Afza’ would not create any confusion among the customers. In this article, I would analyze the judgment.

Arguments

Plaintiff alleged that ‘Rooh Afza’ was a well-known trademark and the plaintiff has been using it since 1942. Defendant’s argument was that ‘Afza’ was a very generic term in sharbat business because there are many sharbat products that are using the term. Hence, the plaintiff cannot claim exclusivity over its use. It also argued that they had been using ‘Dil Afza’ since 1949 and over the years, there has not been any confusion among the consumers. 

Analysis

Firstly, it needs to be highlighted that both ‘Dil Afza’ and ‘Rooh Afza’ are composite marks. This means they are made up of two or more separable words. Section 17 of the Trademark Act says that for this kind of mark, the mark has to be considered as a whole and not in parts. In this case, the defendant had registered the word ‘Dil Afza’ as a whole. Hence, the court has to consider whether the trademark ‘Dil Afza’, as a whole, is phonetically similar to ‘Rooh Afza’.

Here ‘Afza’ is the common name in both the marks. Hence, in order to decide deceptive similarity in both the marks, the court needs to look at whether the other part of the trademark, apart from the part which is common in both the trademarks, is deceptively similar to the rival trademark. Hence, the court has to answer whether ‘Dil and ‘Rooh’ sound phonetically similar in order to decide this case. The Delhi High Court in Anshul Industries vs Shiva Tobacco Products had to deal with this issue. The court had to decide whether the mark Udhta Panchhi and the mark Panchhi Chaap were deceptively similar. Both were tobacco products. Firstly, the court opined that deception needs to be judged from the perspective of an average customer of the said product. The average customers of this kind of product were mostly illiterate and semi-literate who might not be able to distinguish between the two marks.

However, in the present dispute, the court held that the average customer is wise enough to differentiate between ‘Dil’ and ‘Rooh’ because while the former is a Hindi word, the latter is an Urdu word. Moreover, they do not sound phonetically similar. Further, both the products were in the market for a while and there did not seem to be any consumer confusion. The court also held that since the plaintiff has registered the whole name ‘Rooh Afza’ it cannot claim exclusivity over the term ‘Afza’. This is because it is a generic term. Lastly the packaging, color and font were also different for the two products. Hence, the court refused to grant an injunction against ‘Dil Afza’.