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Section 28 of the Trade Marks Act, 1999, states that a validly registered trademark gives to the registered proprietor the exclusive right to use that trademark, except that where two persons are registered proprietors of trademarks that are identical or nearly resemble each other. The question as to their exclusive right to use any of those trademarks was examined by High Court of Delhi, containing Justice Asha Menon in the matter of Humdard National Foundation (India) & Anr. vs. Sadar Laboratories Pvt. Limited [CS (COMM) 551/2020] on 6.01.2022.

The facts of the case are that plaintiff No.1 is Hamdard National Foundation (India), and the plaintiff No.2 is Hamdard Dawakhana. The Plaintiffs are 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 is Sadar Laboratories Pvt. Ltd. that exists since the year 1949, is also engaged in the business of manufacturing Unani medicines, syrups and botanical products. The present case has been 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’. The plaintiffs have also set out in detail, the years since when the trademark ‘Rooh Afza’ in relation to these products had been registered, the first one being on 3rd August, 1942. The registration continues to be valid even now. 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. It is alleged that in the month of March, 2020, the plaintiffs came to know that the defendant had issued an advertisement launching its syrup/sharbat, bearing the mark ‘Dil Afza’ in deceptively similar ringlet bottles as that of the ‘Rooh Afza’ bottle. The defendant had with mala fide intention, also adopted a deceptively similar mark, unique get-up, and design for its product. An application for registration of the mark ‘Sharbat Dil Afza’ in the name of the defendant seems to have been filed on 10th June, 2018 on the basis of ‘proposed to be used’. Another application was filed on 4th July, 2018, claiming ‘user’ since 1949. The plaintiffs claim that it was due to oversight that this application could not be opposed by the plaintiffs and therefore, the defendant has been granted registrations in respect of the mark ‘Sharbat Dil Afza’.

The Counsel for the plaintiffs submitted that the defendant had been using its trademark for medicines i.e., in Class-32, whereas, in 2018, it had sought registration in Class-5 claiming to have been in use of the said trademark for medicines since 1949. However, the drugs licence had been obtained only in 1976, whereas the plaintiffs have been producing and marketing their product/sharbat under the name ‘Rooh Afza’ since 1907 and had obtained the first registration of its trademark in 1942. It was further contended that the trademark ‘Roof Afza’ is a well-known mark, thus fits the definition of a ‘well-known trademark’ under Section 2(1)(zg) of the Trade Marks Act, 1999.

The Counsel for the defendant contended that since both the marks were registered, the suit for infringement did not lie in view of the provisions of Section 29 of the Trade Marks Act, 1999. Learned counsel for the defendant further submitted that ‘Dil Afza’ had been in use since 1949 in Class-5. ‘Rooh Afza’ was also being used in Class-5 since 1949 till 2020 and clearly no confusion had arisen. Therefore, the adoption of ‘Dil Afza’ for syrups and sharbats by the defendant was not mala fide and was not intended for creating confusion. It was submitted that the defendant had its own reputation built over a long period of time and as such, there was no requirement for the defendant to adopt a deceptive trademark to benefit from the reputation of the plaintiffs. It was submitted that both parties were members of the Unani Drug Manufacturers Association and were known to each other and therefore, the plaintiffs were well aware of the defendant’s reputation. It was also his submission that the plaintiffs had not obtained separate registrations for ‘Rooh’ and ‘Afza’ and the registration was for the label in entirety i.e., ‘Rooh Afza’. Similarly, the defendant had got the registration for the entire label/trademark of ‘Dil Afza’ and also could not have got the words ‘Dil’ or ‘Afza’ individually registered. Such registrations would have been refused under Section 9(a) & (c) and Section 11 of the Trade Marks Act, 1999. There could be no confusion between the product of the defendant, namely, ‘Dil Afza’ and the product of the plaintiffs, namely, ‘Rooh Afza’ also on account of the get-up, layout and labelling of the two products.

The High Court of Delhi held that the mark of the plaintiffs ‘Rooh Afza’ and the mark of the defendant ‘Dil Afza’ are both registered. Under Section 28 of the Trade Marks Act, 1999, a validly registered trademark gives to the registered proprietor the exclusive right to use that trademark, except that where two persons are registered proprietors of trademarks that are identical or nearly resemble each other, their exclusive right to use any of those trademarks cannot be enforced against each other. A reference was also made to Section 15(1) of the Trade Marks Act, 1999, which permits a proprietor of a trademark to claim to be entitled to the exclusive use of any part thereof separately, but it noted that in that case the respondents had made no such application. The position is just the same in the present case. The plaintiffs did not apply for and obtained registration for the exclusive use of the word ‘Afza’. Thus, it is clear that the exclusivity that the plaintiffs can claim is to the complete name ‘Rooh Afza’ and not to either of the two words that constitute the trademark. In the light of Section 124(1)(b)(i) of the Trade Marks Act, 1999, the suit was stayed pending for the final disposal of the rectification application filed by the plaintiffs.

Judgment reviewed by Shristi Suman. read judgment here