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

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

[This piece has been authored by Swastik Shukla and Divyanshi Shukla, students at the National Law Institute University, Bhopal.]



In 2019, the official account of Bisleri, it was with photos of fake imitations of Bisleri like Belsri, Bilseri, and Brisleri. As the brand’s tagline notes, “the smart ones know that every bottle of water is not Bisleri.” But, do we?   According to the reports, over 3000 local label cover about 65 percent of the packaged water market, which is estimated to be worth Rs15,000 crore. Issue with Bisleri is just tip of the iceberg of the problem of “deceptive similarity” faced by many famous and premium brands.

The legal right to use a trademark gives creators of creative works the ability to stop others from using a mark that is deceptively similar to theirs. As a result of an increase in the value of such symbols that creates an impression in the minds of the customers, it has tempted the competitors to abuse or adopt these similar symbols to trick the customers into purchasing the wrong product and undermine the reputation of competing goods. This has led to the emergence of the concept of “deceptively similar”. To prevent the interests of competitors and consumers, various tests have been relied upon to assess the similarity between two symbols or marks i.e, the anti-dissection rule and the rule of the dominant feature. However, these two rules create confusion and often lead to contradictory conclusions. In its recent judgment, Hamdard National Foundation & Anr. v Sadar Laboratories Pvt Ltd., Delhi High Court has tried to resolve the confusion between the two by restraining the manufacture and sale of ‘Dil Afza’ by the respondent as “the overall commercial impression of the impugned trademark is confusingly similar.”

The blog delves into intricacies of “deceptively similar” trademark and the role of the two tests to resolve the issue through a recent judgment of the Delhi High Court.


The anti-dissection rule finds its roots in Sections 15 and 17 of the Trademarks Act. In accordance with these sections, the legislative intent can be inferred that is to view two or more trademarks as one indivisible unit, rather than truncating them down into their components. This rule is based on the consumer’s perception of trademarks and it has evolved through several judicial decisions.  Cadilla Healthcare Ltd v Cadila Pharmaceuticals Ltd. has relied on this test and observed that “comparison should be made from the point of view of a person of average intelligence and imperfect recollection” which means that a normal consumer would assess a composite mark as a whole rather than its individual components.

The rule of dominant feature’s roots cannot be found in the Trademarks Act, it has emerged through various judicial pronouncements. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc observes that according to this rule, the infringing part should be examined separately in order to check whether the infringing part tries to take undue advantage of the goodwill. Prime facie, these two rules seem contradictory to each other, however, these two rules are complementary to each other. In South India Beverages Pvt. Ltd. v. General Mills Marketing Inc, the Court acknowledged the harmonization of the two rules and notes that these two rules should be viewed in a holistic manner so that they complement each other. Moreover, a similar line of reasoning was adopted in Stiefel Laboratories v Ajanta Pharma Ltd., wherein the Delhi High Court noted that the rule of dominant feature is a primary step towards final determination of confusion created in minds of the consumer and hence does not violate the rule of anti-dissection.


The appellants in the present case, Hamdard National Foundation and Hamdard Dawakhana, had filed this appeal praying for an injunction against the respondent’s use of the trademark ‘Dil Afza’, alleging that it infringed their popular trademark ‘Rooh Afza’, registered under Indian trademark law since 1942. 

The appellants argued that the mark as well as the design and cover of the respondents’ product is “deceptively similar” to that of the appellants. They issued a cease-and-desist order against the respondents to stop them from using the registered mark.

The appellants filed a suit in High Court seeking an injunction against the respondents but the suit was dismissed by a single judge bench. Arguments of the appellants that both the parts of the mark, ‘Rooh’ and ‘Afza’ deserve protection under the law, even separately was rejected. The judgment was ruled in favor of the respondents stating that the mark only deserves protection as a whole, and the respondents’ mark is not infringing the trademark as the words Rooh and Dil, while both entailing deep emotions, cannot reasonably be assumed to cause confusion in the minds of the average consumer.

Against this decision of the single judge, the present appeal was filed. The division bench of the High Court overturned the judgment of the single judge and ruled in favor of the appellants.


In the present case,  the Delhi High Court noted that “Rooh Afza” is a strong mark and hence, it needs strong protection because higher the strength of the mark, higher the requirement of protection as it is more likely that such trademark would be subjected to piracy as  to gain undue advantage from its goodwill.

Then, the Court, relying on the rule of dominant feature, noted that the word “Rooh” means soul and “Dil” means heart. Since, both of these words, from viewpoint of a person of average intelligence, are used for providing a common conceptual background and hence, it is major contributing factor to the overall commercial impression in minds of the consumers.

Furthermore, the Court adopts the reasoning of the anti-dissection rule and notes that the impression created by “Dil Afza” is deceptively similar to that of “Rooh Afza”. As the syllable Afza is same in both and Afza is an important part of the overall commercial impression of the trademark ‘ROOH AFZA’ as well as the impugned trademark and since, the item in question is a low-priced consumable item and hence, the consumers would most likely would devote a “cursory” attention and therefore, they are likely to get the “deceptively similar” product.

The term Afza, literally speaking, has no relation to sweet beverages (the product), and this was the reason why it cannot be used by the respondents without infringing the trademark. In essence, the term Afza has come to denote the product in question because of the goodwill the brand has acquired over the course of several decades, and is as such, entitled to protection under trademark law, as the significant part of the mark in dispute. The same was held in the case of, where in the term ‘deer’ was held to be the significant part of the mark, while the product in question was rice.

By contrast, in the case of Phonepe (P) Ltd. v. Ezy Services, the term ‘Pe’ in the disputed trademark was not entitled to protection since it was just a tweaked version of a general term that directly related to the product (payment services). Such marks, the Delhi High Court held, are not entitled to protection. Thus, if instead of the ‘afza’, it was some term that was synonymous of ‘sharbat’ or a tweaked version of the same, it would not be eligible to protection under trademark law. This principle, it can be said, stands as a pre-requisite and check over the dominant feature rule.

The Court adopted a similar line of reasoning as that of Kenner Parker Toys v. Rose Art Industries and Planters Nut & Chocolate Co. v. Crown Nut Co. and held that the phrase “Rooh Afza” has been used for more than a century and has served as the identifier for the product and hence, it has immense goodwill. Since, the same requires higher protection and therefore, it is necessary to ensure that the rivals keep a “safe distance” from the aforementioned mark. The Court, due to lack of evidence, denied any goodwill acquired by the respondent in respect of 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 favour of Hamdard Laboratories, restraining a beverage and syrup manufacturer from infringing its 100-year-old registered ‘ROOH AFZA’ trademark.


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 harmonization of the two tests and through a pragmatic approach towards the practicality of the impression created in the minds of the consumers while buying the products. The Rooh Afza case is a welcome step towards viewing the two tests in a holistic manner and taking a pragmatic approach to identify a “deceptively similar” mark and hence, protecting a strong mark from infringement.

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