Selecting the right trademark for your business

Mar 9, 2023 | Trademark

Trademarks play a very important role in any business as they represent and become as the identity of a business. Trademarks are a form of Intellectual Property (IP), which is empowered by The Trade Marks Act, 1999 in India. Section 2 (zb) of the Act defines a “trademark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

In the Act, section 2 (m) defines a “mark” as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours. From the above definitions we can understand that the meaning of trademark is really broad in India. It is really important to choose the trademark for your business carefully so that the customers can distinguish your services or goods from others. Distinct trademark not only helps companies to build a strong trademark but also makes the process of trademark registration smooth because there are less objections during the process of registration. Further, a distinct trademark is less likely to get into any legal disputes. Thus, coining the right mark and protecting it in the initial phase helps in multiple ways.

Things that need to be avoided while choosing a trademark

Section 9, ‘absolute grounds for refusal of registration and section 11, relative grounds for refusal of registration’ of the Act need to be kept in mind while choosing a trademark. Some of the important points from these sections are given below.

• The customers should be able to distinguish the trademark. It must not be confused with other trademarks. Here, trademark search becomes very important.
• The trademark should not be describing the product or service. It shouldn’t be descriptive by providing the kind, quality, quantity, intention, values, geographical origin, characteristics of product etc.
• It shouldn’t be misleading the public in any way.
• The trademark should not hurt any religious susceptibilities.
• Shape of the goods should not represent the goods itself.
• Cannot be identical or similar to an earlier trademark or well-known trademark.

Points that help in finding an attractive trademark

• The mark should be comfortable for the public to read, pronounce and remember.
• It is better not to choose words that can be interpreted by different meanings in any language.
• A mark, which is easy to advertise, will help to make an impact in the customers mind.

Types of trademarks:

• Fanciful marks: Inventing fanciful words without any meaning is easy to protect but requires proper advertising for customers to remember. For example, “BATA” for footwear, “GOOGLE” for web services, ZOMATO for food delivery, etc. These words have no meaning or relation with the services or goods they provide.
• Arbitrary Marks: These are the trademarks where the word or words has meaning and which will be in common use but doesn’t have any relation with the product and services provided by the entity. These marks also need proper advertising for the customers to understand the products and services. For example, “SHELL” for petroleum goods, “BLACKBERRY” for telecommunication devices, “APPLE” for personal computers, etc.
• Suggestive Marks: For a suggestive mark, words are chosen without describing the product but provide some resemblance with the product and services. These marks require less advertising because the customers can get a hint from the mark itself but these marks are difficult to get protection. For example, “AIRBUS” for an aircraft manufacturing company, “EATFIT” for healthy food delivering cloud kitchen, etc.
• Descriptive marks: These marks are very weak for getting protected. These marks describe the product but not in direct meaning. The main advantage of having a descriptive mark is that these marks require less advertising, because, the public can easily understand what the product is. Example “PIZZAHUT” for a pizza restaurant, “CARDEKHO” for used and new car sales platform, etc.
• Generic words for trademark: Companies and enterprises cannot use a term that is like “printer” for a printing machine as a mark. A generic word used as a trademark which later on is used to describe the whole product category could lead to a loss of distinctiveness. This is called as genericide. Some examples are of this are “XEROX”, “SUPERGLUE”, “JET SKI”, “BAND-AID”, “ASPIRIN” etc. These products have lost their distinctive identity.

Conclusion

The strongest and easily protectable trademarks are fanciful marks (Ex: Google) and arbitrary marks (Ex: Amazon). These trademarks are distinctive, easy to remember and pronounce, and also makes an impact in the minds of public.

Author: Kailesh Gopi

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Rooh Afza vs Dil Afza: Case Analysis

May 18, 2013 | Trademark

Hamdard National Foundation (India) & Anr. vs. Sadar Laboratories Pvt. Ltd., [ROOH AFZA vs. DIL AFZA] is a rather notable and recent example of the protection sought for the specific term used in a trademark, in which the individual terms are frequently used during specific product segment. The complainant, Hamdard National Foundation (India), is a charity organization founded in 1906 that places importance on distributing profits to promote the welfare of the community. The Hamdard business earnings have effectively gone to its establishment for many decades. The Complainants have manufactured and supplied Unani and Herbal medications, creams, flavorings, and non-alcoholic refreshments. The respondent company, Sadar Laboratories Pvt. Ltd. has been producing Unani medications, syrups, and plant-based items since 1949, when M/s. Sadar Dawakhana founded it.

Facts of the Case

The present complaint was filed since the respondent was infringing on the complainants’ trademark, ‘Rooh Afza,’ and passing off its goods as the complainants’ using the name ‘Dil Afza.’ The plaintiffs claim that they have established a significant reputation and brand image about ‘Rooh Afza,’ with total revenue of Rs.30, 983.57 lakhs in 2019-20 and up to Rs.16, 281.41 lakhs till August 2020. The plaintiffs have invested a substantial amount of money on advertising, as made evident by their expenditure of Rs.459.10 lakhs through 2019-20 and Rs. 577.89 lakhs through 2020-21, up to August 2020. The plaintiffs have also defined the decades in considerable detail when the trademark ‘Rooh Afza’ was first allowed to register for such products.   For a hundred years, the claimants’ product/sharbat was marketed in containers with the brand ‘Rooh Afza,’ with a unique color scheme, design, collection, and placement of components, most prominently a different and interesting floral pattern.

Issues raised

1. Whether the defendant violates the plaintiff’s trademark rights?
2. Whether the defendant’s registered trademark have legal validity?
3. Is the defendant’s trademark likely to induce confusion amongst the consumers if used for competing products?

Plaintiff’s Argument

1. The plaintiffs filed this claim to protect their trademark once they noticed in early 2020 that the defendant had developed ad campaigns publicizing its sweetener, having the mark ‘Dil Afza,’ in misleadingly similar ringlet containers to those of ‘Rooh Afza’ container. Furthermore, the defendant was using a confusingly similar label, and styling for its goods with bad intent. On June 10, 2018, the mark ‘Sharbat Dil Afza’ in the defendant’s name seemed to have been requested to be registered based on ‘intended to be used.’
2. The plaintiffs contended that injunctions would probably be provided against the defendant. Since the defendant had used its trademark for medications, i.e., under Class-32, it expected certification in Class-5 in 2018, claiming that it had used the mentioned product for medications since 1949. The medications certificate, on the other side, was obtained just in 1976, however, the plaintiffs had already been supplying and advertising their brand as ‘Rooh Afza’ since 1907, many years before when the defendants registered their trademark in 1942.
3. Roof Afza is a very popular trademark that fulfilled the definition of a “well-known trademark” as defined in Section 2(1)(zg), Trade Marks Act of 1999. Acquiring a drug permit was inadequate to assert use, and the defendant cannot release any paperwork, notwithstanding the opportunity to show that the expression ‘Dil Afza’ was in use from 1949. The trademark was claimed to have been acquired fraudulently since no evidence of use was provided to the Registrar. As a result, the registration was declared void, and the defendant has been unable to seek benefits u/s 28 of the Act. Distinctions in labelling and brand identities have also been considered insignificant due to the risks of confusion.

Defendant’s Argument

1. The defendant firmly opposed to approving of plaintiff’s request for any injunctive order, claiming that u/s 29 of the Trade Marks Act, 1999, the violation claim was null and void since both marks were registered.
2. The defendant claimed that the term ‘Afza’ has now become popular in the syrup market, with many businesses in the sharbat/syrup market using it. The counsel contended that the plea makes reference to ‘Hamdard’ as well as to ‘Rooh Afza,’ because it was ‘Hamdard,’ not ‘Rooh Afza,’ which was the renowned and prominent label, not ‘Rooh Afza,’ isolated. The plaintiffs did not obtain separate registrations for the terms ‘Rooh’ and ‘Afza,’ and the registration was for the whole title, i.e., ‘Rooh Afza.’ Meanwhile, the defendant had registered the entire ‘Dil Afza’ term and had not registered the terms ‘Dil’ or ‘Afza’ independently. Such filings would have been barred u/s 9(a) and (c) of the Trade Marks Act of 1999 and Section 11 of the Act. Furthermore, because ‘Afza’ is the common term used and there was a substantial distinction between the terms ‘Dil’ (meaning ‘heart’) and ‘Rooh’ (meaning ‘spirit’), no category of purchasers would be deceived into thinking that perhaps the defendant’s commodity was indeed linked to that of plaintiffs. All who want to purchase ‘Rooh Afza’ will indeed purchase ‘Rooh Afza.’  Thus, despite the common use of the word ‘Afza,’ there’s no space for confusion.
3. The defendants also claimed that now the term ‘Dil Afza’ had been used in Class-5 from 1949. The term ‘Rooh Afza’ has also been used in Class-5. From 1949 until 2020, there had never been any doubt. Consequently, justifying that the defendant’s usage of the title “Dil Afza” for sharbat flavourings cannot be deemed dishonest or intended to provoke confusion. It was contended that since the defendant had developed its brand image, it was not a requirement for the defendant to obtain a misleading mark to profit from the plaintiffs’ goodwill.
4. They also claimed there could be no confusion in distinguishing ‘Dil Afza,’ and ‘Rooh Afza,’ owing to the products’ design, styling, and labeling. The plaintiffs’ packaging comprised flowers, while the defendant’s packaging included fruits; the texts were distinctive; the defendant’s label also included the owner’s mark of ‘Sadar’ and its inscription at the top centre, clearly suggesting the origin of goods to be the defendant and to have nothing to do with plaintiffs’ mark of ‘Hamdard’; The colour of the cap is different as the plaintiff’s bottle has a yellow cover, whereas defendant’s bottle has a brown cover.
5. Therefore, the plaintiffs can only claim the entire phrase for which they had obtained registration, and similar terms used in the sector cannot be offered distinctiveness. Furthermore, the plaintiffs had failed to prove that the term “Afza” had obtained a slightly different meaning, which was purely associated to their brand. Finally, no injunction order could be awarded because the remedy sought in the interim application was essentially the same as sought in the primary suit.

Judgment

On 6^th January 2022, the Court pronounced the judgment in the matter. It was held that:

• Both the plaintiffs’ and defendants’ marks, Rooh Afza and Dil Afza, are registered. A legitimate trademark registration gives the registered owner an exclusive authority to use trademark, except that the if two individuals are registered owners of similar trademarks, their exclusive entitlement to get any of those trademark rights cannot be imposed against one another.
• The defendant’s mark could not be validly certified since it is nearly identical to the claimants’ trademark, which was registered in 1942 as well for the same products, i.e.,’sharbat.’ So there is a possibility of general misunderstandings.
• Also, the plaintiffs’ allegation of having established a strong goodwill and brand image in connection with their brand name ‘Rooh Afza’ cannot be ignored even on preliminary grounds.
• There is indeed a significant difference between both the words and no indistinguishable mark exists.
• The similarity is preferred because both ‘Dil’ and ‘Rooh’ elicit powerful emotions and have the word ‘Afza.’ Even as courts have repeatedly noticed, the requirement to be used in evaluating misunderstandings emerging in the head is of a buyer with flawed recollection and regular subjectivity.
• Even if the consumers were particularly fond, it is hard to fathom that the use of the terms ‘Rooh’ and ‘Dil’ will indeed cause confusion due to its strong sentimental overtones. Buying a bottle of sharbat may evoke emotions, although not to the profundities anticipated by the plaintiffs. All who recognise this prominent feeling will, in any case, be capable of distinguishing between ‘Rooh’ and ‘Dil.’ Nevertheless, the courts expressed concern about the consumer, for whom the words ‘Dil’ and ‘Rooh’ will not have the same meaning in regular usage. The two words’ understandings are indistinguishable.
• In addition, the complainants do not indicate having to apply for or obtaining registration for the restricted usage of the term “Afza.” Consequently, the plaintiffs may just contend privilege for the entire phrase ‘Rooh Afza,’ rather than each of the two elements that create the brand name.
• Nevertheless, the request is denied, with the defendant ordered to maintain accurate records of ‘Dil Afza’ revenues.

Conclusion

Consequently, the plaintiffs can only assert privilege over the entire term ‘Rooh Afza.’ Regardless of the fact that Dil Afza arrived the industry in 1976, there seems to have been peaceful equilibrium with no misunderstandings in the heads of consumers for this long time in the much more delicate healthcare industry. Consequently, Dil Afza won a favorable ruling, bolstering the notion of the phrase combination in use for trademark rights.

Author: Adyasha Das, Symbiosis Law School, Hyderabad

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