Hamdard National Foundation v. Sadar Laboratories: ROOH AFZA and DIL AFZA

Citation & Court

Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Ltd., Delhi High Court, Division Bench (Vibhu Bakhru and Amit Mahajan JJ.), FAO(OS) (COMM) 67/2022, decided 21 December 2022, neutral citation 2022/DHC/005711; appeal from the order of Asha Menon J. dated 6 January 2022 in CS (COMM) 551/2020; SLP (C) No. 9494/2023 dismissed by the Supreme Court on 17 May 2023

The Dispute

Hamdard has sold ROOH AFZA sharbat since 1907, with registrations going back to 1942. In 2020 Sadar Laboratories launched a red sharbat, SHARBAT DIL AFZA, in a similar transparent bottle. Sadar held registrations for that mark in classes 5 and 32 and claimed use for Unani syrups since 1949. A single judge refused an interim injunction, holding that Hamdard could claim exclusivity only in the whole mark ROOH AFZA, that AFZA alone had no secondary meaning, and that the marks had long co-existed. On appeal, the question was whether DIL AFZA, taken as a whole, was deceptively similar to ROOH AFZA.

What the Court Held

• Composite marks are compared as wholes, but a court may examine a dominant part, and a mark can have more than one; requiring AFZA alone to have a secondary meaning was an error.
• AFZA is not descriptive of sharbat and is a significant part of ROOH AFZA; since ROOH (soul) and DIL (heart) evoke the common phrase 'heart and soul', a buyer of imperfect recollection could recall ROOH AFZA.
• The same deep red liquid in a transparent ringed bottle, similar label placement and a busy floral or fruit label added to a similar overall impression, and buyers of a cheap consumable pay only cursory attention.
• A strong century-old mark needs high protection, so rivals must keep a safe distance; co-existence on medicinal syrup proved nothing for beverages, unproven AFZA registrations did not make it common to trade, and Class 32 use was restrained.

How to Use This in Your Reply

Cite it in oppositions, objection replies and infringement suits involving composite marks that share a distinctive element, such as a common suffix or prefix. It answers the anti-dissection argument by allowing focus on dominant parts, recognises similarity of idea even between words that are not synonyms, and treats trade dress as evidence of overall commercial impression. Where the other side lists third-party registrations containing the same word, use it to insist on proof of actual market use. It also shows that long use on a different product, here medicinal syrup, does not prove peaceful co-existence for the goods in dispute.

Important Limit

This interim ruling came while the suit stood stayed under section 124; Hamdard's cancellation petitions, heard by the High Court since the IPAB was abolished in 2021, were pending in October 2023. The Supreme Court dismissed the special leave petition without reasons, so this is not Supreme Court precedent. The bench leaned on American decisions; a shared word proved descriptive or common to trade may change the result.

Judgment Source

Read the judgment. For other cases on the same issue, see trademark case laws in India, by issue.