Delhi High Court: While deciding a case related to the product and mark ‘ROOH AFZA’, the Single Judge Bench of Prathiba M. Singh, J. granted permanent injunction to the plaintiffs and directed that if any other infringing product was available on www.amazon.in, then the same should be taken down after bringing it to the notice of the defendants.
Facts of the Case
Plaintiffs were engaged in the business of manufacturing and selling various Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic beverages. The Hamdard Group of the plaintiffs dated back to over 100 years, and they own rights in the marks ‘HAMDARD’ and ‘ROOH AFZA’. The mark ‘ROOH AFZA’ was adopted by the plaintiffs in 1907 and had been used for a range of products including non-alcoholic sharbets and beverages. The mark ‘ROOH AFZA’ was registered in India and one of the registrations of the plaintiffs dated back to 1942. Other trademarks have also been registered by the plaintiffs for variants of ‘ROOH AFZA’, including the labels and flavour variants, etc.
Amazon (Defendant 1) and a seller on Amazon (Defendant 2) selling and offering for sale the product ‘ROOH AFZA’(impugned product). Notices had been issued to Defendant 2 and the impugned product was removed from www.amazon.in platform. However, the impugned product was again listed on Amazon, and the plaintiffs bought it and found that it was not the product they manufactured.
Submission on behalf of the Plaintiffs
Counsel for the plaintiffs contended that the impugned product was manufactured in Pakistan and did not comply with the legal requirements of the Legal Metrology Act, 2009 (Act), the Legal Metrology (Packaged Commodities) Rules, 2011 (Rules) and the Food Safety and Standards Act, 2006 (FSSAI) which governed such products. It was also pointed out that three purchases were affected by them from three sellers through the www.amazon.in platform and on all the three occasions, the impugned product was claimed to be manufactured by Hamdard Laboratories (Waqf), Pakistan.
Analysis, Law, and Decision
The original bottle that was purchased from the www.amazon.in platform was shown to this Court and accordingly directions were issued in Hamdard National Foundation v. Amazon India Ltd., 2022 SCC OnLine Del 2849 wherein this Court directed Amazon to remove the listings of infringing products from its website www.amazon.in within 48 hours and provide details of the sellers to the plaintiffs.
On 11-11-2022, counsel for the plaintiffs submitted that since all the details of the sellers had been received and all the infringing products had been taken down, the reliefs sought in the present plaint were satisfied.
The Court ordered permanent injunction against Defendant 2 and held that the suit shall stand decreed in terms of paragraph 38(a) of the plaint, which was as follows:
“an order for permanent injunction restraining the Defendants, their proprietors or partners or directors as the case may be, their principal officers, servants, agents and all others acting for and on behalf of the Defendants from using, selling and offering for sale the products under the mark ROOH AFZA which is identical to the registered trade mark ROOH AFZA of the Plaintiffs, in any manner and for any goods and services particularly for Syrups/Sherbets products, so as to cause confusion or deception leading to infringement thereof”
The Court directed that in case any other products infringing the plaintiff’s mark ‘ROOH AFZA’ were found by the plaintiffs then the same should be brought to the notice of Defendant 1 and the same should be taken down in accordance with the Information Technology (Intermediary Guidelines and Digital Media ethics Code) Rules, 2021 as amended in 2022.
In one of the cases, the mark ‘ROOH AFZA’ was denied injunction against the mark ‘ALI AFZA’. Read here.
[Hamdard National Foundation (India) v. Amazon India Limited, 2022 SCC OnLine Del 3695, decided on 11-11-2022]
Advocates who appeared in this case:
For the Plaintiff(s): Advocate Shivndra Pratap Singh;
Advocate Navdeep Suhag;
For the Defendant(s): Advocate Sidharth Chopra;
Advocate Devrat Joshi;
Advocate Vivek Ayyagri;
Advocate Angad Makkar.