It was claimed in Hamdard National Foundation v. Hussain Dalal, 202 (2013) DLT 291 Yeh Jawaani Hai Deewani (2013, Dir. Ayan Mukherjee) contains some dialogues which injures the goodwill and reputation of ‘Rooh Afza’, a popular concentrated squash. It was admitted, ‘Rooh Afza’ is a well-known trademark. Attention was drawn to Section 29(9) of The Trade Marks Act, 1999. Hon’ble High Court of Delhi directed, considering YJHD had already released, omission of the objectionable content from DVDs or TV versions.
None of this, which was widely reported, had caused any hindrance when Roohi (2021, dir. Hardik Mehta) was initially named Rooh-Afza and @RajkummarRao had tweeted about the same on 29/03/2019. It may have been a publicity stunt. For now, Roohi, the character, captured by Ghost-Afza, avoids trouble. But, naming of efforts can be better.
Sadar Laboratories Pvt. Ltd. submitted, there is a great difference between words ‘Dil’ and ‘Rooh’. Ones desirous of buying ‘Rooh Afza’ would buy ‘Rooh Afza’ and those satisfied with ‘Dil Afza’ would purchase ‘Dil Afza’. There was no scope for any confusion.
Admittedly, mark ‘Rooh Afza’ and mark ‘Dil Afza’ are both registered. The question of whether registration is valid will be appropriately considered under Section 28 of The Trade Marks Act, 1999. However, the question whether this Court could issue any directions under Section 124(5) of The Trade Marks Act, 1999 would remain.
Hamdard National Foundation’s claim of having built a vast reputation and goodwill in respect of trademark ‘Rooh Afza’ cannot be rejected. As has been repeatedly held, standard to be adopted while determining confusion is of a consumer of imperfect memory or recollection and of ordinary sensibilities. It would be taking an extreme position, even if consumers were connoisseurs, to believe, use of ‘Rooh’ and ‘Dil’ would cause confusion because they connote deep emotion. In any case, those who appreciate this deep emotion would be first to be able to distinguish between ‘Rooh’ and ‘Dil’. However, we are concerned with a common consumer, to whom, ‘Dil’ and ‘Rooh’ do not denote the same thing. There cannot be a confusion.
Hamdard National Foundation does not state, it applied for and obtained registration for exclusive use of ‘Afza’. Thus, exclusivity claimed is to complete name ‘Rooh Afza’ and not to either of two words.
There has been peaceful co-existence with no confusion arising in minds of consumers. Sadar Laboratories Pvt. Ltd. to maintain a true account of sales of ‘Dil Afza’ syrup/sharbat and submit to Court. In light of Section 124(5), suit is stayed pending final disposal of rectification proceedings.
– Hon’ble Justice Asha Menon, Hamdard National Foundation v. Sadar Laboratories Pvt. Limited, Delhi High Court, [CS (COMM) 551/2020] decided on 06/01/2022.