The Delhi High Court recently denied granting interim relief by way of injunction sought by Vasundhra Jewellers Pvt. Ltd. (“the plaintiff”) on the basis of its mark ‘VASUNDHRA’ against Vasundhara Fashion Jewellery LLP (“the defendant”), which uses the mark ‘VASUNDHARA’ (with an extra A).
The plaintiff, established in 1999 under the trading name Vasundhra Jewellers Pvt. Ltd., claimed that it has been using the trademark and trade name ‘VASUNDHRA/ VASUNDHRA JEWELLERS’ continuously and uninterruptedly since the year 1999 for their jewellery business via their showroom in New Delhi and has also secured trademark registration for the trademark ‘in class 14 since May 2003 with recorded user claim of 1999. The plaintiff is also the owner of the domain name <www.vasundhrajewellers.com> since June 26, 2011, and various other domain names consisting of ‘VASUNDHRA/ VASUNDHRA JEWELLERS’ as an essential part. To showcase the steady growth of their business, the plaintiff filed its annual turnover figures showcasing the increase in turnover from INR 19.8 Lacs in the year 1999-2000 to INR 79 Crores in the year 2021-2022.
Around June 2019, the plaintiff came across the defendant’s use of the ‘VASUNDHARA’ marks when the defendant’s mark was cited in the Examination Report dated June 18, 2019, issued by the Trade Mark Registry against the plaintiff’s trade mark application no.4169987 for registration of the mark ‘VASUNDHRA JEWELLERS PRIVATE LIMITED’ in Class 14. Later in January 2022, the plaintiff came across the website bearing the domain name https://www.vasundhara.in/, and it was discovered that the defendant is also engaged in selling jewellery and precious stones. A cease-and-desist notice was then sent by the plaintiff to the defendant; in reply to the same, the defendant refused to comply with the plaintiff’s demands and claimed the use of the trademark VASUNDHARA since the year 2001. Accordingly, the plaintiff filed the present suit infringement and passing off contending that due to prior adoption, registration, and continuous use and extensive promotion of the VASUNDHRA marks, the same have acquired distinctiveness, and the consumers associate the goods bearing the said marks exclusively with the plaintiff.
The defendant argued that its mark ‘VASUDHARA’ has been used since the year 2001 and has been honestly derived from the name of Ms. Vasundhara Mantri who is one of the designated partners with 99.09% shareholding in the defendant LLP. The defendant also showcased its trademark registrations obtained for the mark ‘VASUDHARA’ and its visual variations in multiple classes including class 14 since June 2003, with recorded user claim since 2001 as well as a copyright registration obtained in 2005 for the unique and artistic way of writing ‘VASUNDHARA’. In addition, the defendant further informed that it had launched its website, <www.vasundhara.in>, in 2007. Just like the plaintiff, the defendant also showcased its growth in business with turnover of INR 48.2 thousand in 2001-2002, raising to INR Rs.1.95 crores in 2018-2019.
The Court noted that since both the plaintiff and the defendant are the registered proprietors of phonetically identical marks ‘VASUNDHRA’ and ‘VASUNDHARA’ respectively in Class 14 in respect of jewellery products, therefore, in view of Section 28(3) of the Trade Marks Act, 1999 read with Section 30(2)(e) of the Act, an action for infringement would not be maintainable; however, the case can be considered for grant of interim injunction in the context of the relief against passing off.
The Court referred to Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73, noting the essential elements for constituting passing off elucidated by the Supreme Court in the following terms:
(1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
The Court further noted Section 35 of the Act, which provides as follows:
35. Saving for use of name, address or description of goods or service —Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.
In the context of the abovementioned section the Court observed that the defendant started the jewellery designing business under her own name “VASUNDHARA” since the year 2001 and noted all the evidence proving the widespread use garnering goodwill in her favor such as copies of invoices from the year 2005 and the various mentions that the defendant received in multiple Bollywood motion pictures as well as fashion shows such as Rome Fashion Week, 2006, Wills Lifestyle India Fashion Week, 2007, 2008, 2009 and Couture weeks in 2007, 2008 and 2012. The Court also noted and considered the trademark and copyright registrations obtained by the defendant as well as their operational website.
The Court observed that there is no absolute proposition of law that the benefit of Section 35 of the Act would be available only in respect of full name i.e., Ms. Vasundhara Mantri, and it can be made available with respect to just VASUNDHARA as well because she holds 99.09% share in the defendant LLP. The Court further observed that the defendant is an honest and concurrent user of the mark ‘VASUNDHARA’ since the plaintiff had produced no evidence to showcase that it had goodwill in the year 2001. Doubt was raised on the veracity of the invoices filed by the plaintiff since the year 1999 because the defendant highlighted that the invoices, which were handwritten, showed the domain name of the plaintiff, i.e., ‘www.vasundhra.com’, which was unimaginable in the year 1999. Further, the attention of the Court was drawn to the invoice of the plaintiff dated August 17, 2016, in which Goods and Services Tax (GST) had been charged, even though the GST came into effect on July 1, 2017. In view of this, the Court opined that whether the plaintiff is a prior user of the mark ‘VASUNDHRA’ would be a matter of trial.
The Court also referred to another case involving the plaintiff i.e., Vasundhra Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 3370 wherein the apex court had made certain observations with respect to the extent of monopoly that can be granted to the mark VASUNDHRA. Though the aforesaid judgment was in the context of dissimilar goods, however, the Court said that the observations are applicable to the present case as well, which are mentioned below:
- ‘VASUNDHRA’ is a generic/common word, and there are several registered trademarks with the mark ‘VASUNDHRA’.
- Proprietor can claim exclusive right on the mark only after establishing exclusivity of the mark with the business of the proprietor on account of extensive usage.
- High turnover of the plaintiff because of the products being of high value cannot be the determinant factor for establishing reputation.
- Exclusive monopoly cannot be claimed on the mark ‘VASUNDHRA’ on account of registration of the composite mark, including the aforesaid mark.
- The plaintiff cannot take a contrary stand to the one taken before the Registrar of Trademarks while getting the mark registered.
Keeping the aforementioned points in consideration, the Court observed that the visual representation of the plaintiff’s registered mark for ‘VASUNDHRA’ was different than the visual representation of the defendant’s ‘VASUNDHARA’ marks. As far as the plaintiff’s contention that the mark ‘VASUNDHRA’ has acquired exclusiveness is concerned, the Court was of the view that this aspect can only be examined in a trial and cannot be the basis for the grant of interim injunction.
The Court also noted that the plaintiff, in its reply dated July 1, 2019 filed to the examination report issued by the Trade Mark Registry in connection with the trademark application no. 4169987 filed by the plaintiff for registration of the word mark ‘VASUNDHRA JEWELLERS PRIVATE LIMITED’, had taken a categorical stand that the spelling of the word ‘VASUNDHRA’ used by the plaintiff and the word ‘VASUNDHARA’ used by the defendant are different and when the marks are read and as a whole with their visual representation, they cannot be considered similar or identical. In view of the aforesaid stand taken by the plaintiff, the Court said that the plaintiff cannot take a contrary stand in the present suit. The interim relief was accordingly denied.