Rooh Afza v. Dil Afza: A Classic Case of Deceptive Similarity

The official Bisleri Instagram account in 2019 featured images of false versions of the brand, including Belsri, Bilseri, and Brisleri. The tagline for the company declares that "the wise know that every bottle of water is not Bisleri." Though do we? Almost 3000 local labels account for about 65 percent of the bottled water business, which is thought to be worth Rs15,000 crore, according to the reports. The issue with Bisleri is only the tip of the iceberg in terms of the "deceptive likeness" issue that many renowned expensive companies are dealing with.

As a result, the idea of "deceptively similar" has emerged. The anti-dissection rule and the rule of the dominating feature are two standards that have been used to determine how similar two symbols or logos are in order to protect the interests of customers and rivals. These two rules, however, are confusing and frequently result in opposite outcomes. The Delhi High Court recently attempted to resolve the confusion between the two parties in Hamdard National Foundation & Anr. v. Sadar Laboratories Pvt Ltd. by prohibiting the respondent from manufacturing and selling "Dil Afza" because "the overall commercial impression of the impugned trademark is confusingly similar."

THE INTERPLAY BETWEEN THE ANTI-DISSECTION RULE AND THE RULE OF DOMINANT FEATURE

The Trademarks Act's Sections 15 and 17 serve as the foundation for the anti-dissection rule. According to these passages, it can be assumed that the legislative goal was to treat any combination of two or more trademarks as a single indivisible entity rather than breaking them up into individual parts. This regulation was developed through a number of legal rulings and is based on how consumers perceive trademarks. Based on this test, the court in Cadilla Healthcare Ltd v. Cadila Pharmaceuticals Ltd. stated that "comparison should be made from the point of view of a person of average intelligence and imperfect recollection," meaning that a typical consumer would evaluate a composite mark as a whole rather than its individual components.

The Trademarks Act does not contain the origins of the dominating feature rule; rather, it was established through a number of judicial rulings. According to this criterion, the infringing element should be investigated independently to see if it tries to unfairly capitalize on the goodwill, according to South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. These two rules initially appear to be at odds with one another, yet they actually work best together.

In South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., the court recognized the two rules' harmonization and noted that they should be evaluated as a whole to ensure that they work in concert with one another. Additionally, the Delhi High Court noted that a similar line of thinking was used in Stiefel Laboratories v. Ajanta Pharma Ltd., where it was determined that the rule of dominant feature is a first step towards determining whether or not confusion was created in the minds of consumers and does not, therefore, violate the rule of anti-dissection.

FACTS OF THE CASE:

According to the appellants in this case, Hamdard National Foundation and Hamdard Dawakhana, the respondent's use of the trademark "Dil Afza" infringed upon their well-known trademark "Rooh Afza," which has been registered under the Indian trademark law since 1942. They, therefore, requested an injunction against this use.

The respondents' product's design and cover, as well as the mark, according to the appellants, are "deceptively similar" to their own. To prevent the respondents from making use of the registered mark, they issued a cease-and-desist order against them.

The appellants brought a lawsuit in the High Court seeking an injunction against the respondents, but a single judge bench dismissed the case. The appellant's claims that the words "Rooh" and "Afza," which make up the mark, should also be legally protected, even separately, were denied. The court ruled in favor of the respondents, stating that the mark should only be protected as a whole and that the respondents' mark does not infringe on the trademark because, despite the fact that the words Rooh and Dil both conjure up strong feelings, it cannot be assumed that they will confuse the average consumer.

This appeal was filed in opposition to the sole judge's judgment in question. The High Court's division bench overruled the single judge's decision and found it in the appellants' favor.

SCRUTINIZING THE VIEWPOINT THROUGH THE JUDGMENT:

The Delhi High Court noted that "Rooh Afza" is a strong mark in the current case and that it, therefore, needs strong protection because the stronger the mark, the greater the need for protection because it is more likely that such a trademark will be the target of piracy in order to unfairly benefit from its goodwill.

The Court then pointed out that "Rooh" means soul and "Dil" means heart, basing its observation on the principle of dominating feature. Although both of these words are utilized to provide a shared conceptual backdrop, from the perspective of a person of ordinary intellect, they significantly contribute to the overall commercial impression in customers' minds.

Additionally, the Court adopts the anti-dissection rule's logic and observes that "Dil Afza's" impression is misleadingly similar to "Rooh Afza's". Because the syllable "Afza" is the same in both and plays a significant role in the overall commercial impression of the trademark "ROOH AFZA" as well as the contested trademark, consumers are more likely to pay "cursory" attention and end up with a "deceptively similar" product because the product in question is a low-priced consumable.

Since the term Afza literally has nothing to do with sweet beverages (the product), the respondents are unable to use it without violating the trademark. In essence, the term "Afza" has come to be used to refer to the product in question because of the goodwill the brand has built up over many years. As a result, it is entitled to protection under trademark law as the main component of the disputed mark. The same decision was made in the case, where the word "deer" was deemed to be the most important component of the mark, despite the fact that the commodity in question was rice.

In contrast, the term "Pe" in the contested trademark was not entitled to protection in the case of Phonepe (P) Ltd. v. Ezy Services since it was merely a modified version of a general term that directly linked to the product (payment services). The Delhi High Court ruled that such marks are not protected. Hence, it would not be eligible for trademark protection if, in place of the word "afza," some term that was the same as "sharbat" or a modified form of the same was used. It is possible to say that this concept serves as a prerequisite and a check against the rule of the prominent feature.

The court determined that the term "Rooh Afza" has enormous goodwill because it has been used for more than a century as the product's identifier and has followed a similar line of reasoning to Kenner Parker Toys v. Rose Art Industries and Planters Nut & Chocolate Co. v. Crown Nut Co. Due to the need for more security, it is imperative to make sure that competitors remain at a "safe distance" from the aforementioned mark. Due to a lack of evidence, the Court rejected any goodwill the respondent may have acquired in relation to their product. Keeping these viewpoints, a division bench of the Delhi High Court set aside the order of the single bench and granted an interim injunction in favor of Hamdard Laboratories, restraining a beverage and syrup manufacturer from infringing its 100-year-old registered ‘ROOH AFZA trademark.

CONCLUSION

While gaining an undue advantage from the goodwill created by a strong trademark is inevitable, the need to protect such a trademark becomes imminent. To do the same, two tests have been developed through legislation and judicial pronouncements, the law was never intended to follow one rule in toto and leave the other. Doing so will only lead to unfair and contradictory results. This conundrum of determining whether the impugned park is “deceptively similar” to the original trademark can be resolved only through harmonizing the two tests and a pragmatic approach toward the practicality of the impression created in the minds of the consumers while buying the products. The Rooh Afza case is a positive move in the direction of integrating the two tests and adopting a practical strategy to spot a mark that is "deceptively similar" and, consequently, defend a powerful mark against infringement.