FACTS:
- Plaintiff No.1 is Hamdard National Foundation (India), a charitable institution registered under the Societies Registration Act, 1860, and Plaintiff No.2 is Hamdard Dawakhana, also trading as Hamdard.
- The defendant company/Sadar Laboratories Pvt. Ltd. since the year 1949, through its predecessor, M/s. Sadar Dawakhana is engaged in the business of manufacturing Unani medicines, syrups, and botanical products.
- Defendant was infringing the well-known trademark of the plaintiffs in 'Hamdard' and 'Rooh Afza' and passing off its products as those of the plaintiffs by using the name 'Dil Afza'.
- 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.
- An application for registration of the mark ‘Sharbat Dil Afza’ in the name of the defendant seemed 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 claimed that it was due to oversight that the above application could not be opposed by the plaintiffs and therefore, the defendant had been granted registrations in respect of the mark ‘Sharbat Dil Afza’.
ISSUES:
- Whether permanent injunction, restraining the defendant from infringing plaintiff’s registered trademarks should be granted?
- Whether the seeking of protection against disparagement, dilution and tarnishment of trademarks, damage to reputation and tarnishment of brand equity and damages are given?
- Whether this Court issue any directions under Section 124(5) of the Trade Marks Act, 1999?
- Whether the use of defendant’s trademark for similar products would result in confusion?
REASONING:
- Court denied accepting the contention of the defendant’s counsel that the trademark of the plaintiffs namely ‘Rooh Afza’ was not a well-known mark, cannot be accepted in view of the observations of the Lahore High Court in Unani Dawakhana v. Hamdard, 1930. On a prima facie view, the plaintiffs’ claim of having built a vast reputation and goodwill in respect of their trademark ‘Rooh Afza’, cannot be rejected.
- Word 'Afza'- Plantiffs in the present matter do not state that they had applied for and obtained registration for the exclusive use of the word 'Afza'. Hence, it was clear that the exclusive use of the word 'Afza'. Hence, it was lear 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.
The Court opined 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.
DECISION:
- In view of the above discussion, the application was dismissed with a direction to the defendant to maintain a true account of sales of ‘Dil Afza’ syrup/sharbat during the pendency of the present suit and to submit to the court, a quarterly report and account, till the disposal of the suit.
- High Court in light of Section 124(1)(b)(i) of the Trade Marks Act, 1999, the suit is stayed pending the final disposal of the rectification application filed by the plaintiffs. Conclusion of those proceedings, either side may move an application for listing of the suit before the court.