‘Bona Fide’ Use of Own Name is a Defence in Passing Off Actions Under S.35 Trade Marks Act: Delhi High Court - 2025-08-28

Delhi High Court Upholds Refusal of Injunction in 'Vasundhra' vs 'Vasundhara' Jewellery Trademark Dispute

New Delhi: In a significant trademark dispute between two jewellery houses, a Division Bench of the Delhi High Court has affirmed a single judge's decision to deny an interim injunction to Vasundhra Jewellers Pvt. Ltd. The court held that M/s Vasundhara Fashion Jewellery LLP's use of the name 'VASUNDHARA' was a bona fide use of its founder's name, a defence permissible under Section 35 of the Trade Marks Act, even in a case of passing off.

The bench, comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, dismissed the appeal filed by Vasundhra Jewellers, ruling that it failed to make a prima facie case for an injunction.

Background of the Dispute

The appellant, Vasundhra Jewellers Pvt. Ltd. , established in 1999, claimed to be the prior user and registered owner of the trademark "VASUNDHRA" and "VASUNDHRA JEWELLERS". They initiated a suit against M/s Vasundhara Fashion Jewellery LLP for using the phonetically identical mark "VASUNDHARA", alleging trademark infringement and passing off.

The respondent contended that its mark was adopted in 2001 from the first name of its founder, Vasundhara Mantri, and has been in continuous and bona fide use since. They also held registrations for their device mark dating back to 2003, claiming user since June 2001.

A single judge of the High Court had earlier dismissed the appellant's application for a temporary injunction, prompting the present appeal.

Key Arguments Presented

Appellant's Contentions: - They were the senior user of the mark, having started in 1999. - The defence under Section 35 of the Trade Marks Act (bona fide use of own name) is not applicable to passing off actions, only infringement. - The protection is only for a person's full name , not just a part of it (i.e., "Vasundhara" instead of "Vasundhara Mantri"). - The protection under Section 35 applies only to natural persons, not corporate entities like the respondent LLP.

Respondent's Contentions: - The use of "VASUNDHARA" originated honestly and bona fide from the founder's own name in 2001. - The appellant, in a previous proceeding before the Trade Marks Registry, had argued that the two marks were not deceptively similar, and was therefore estopped from claiming the contrary now. - The appellant had not established sufficient goodwill in its mark before 2001, when the respondent commenced its business.

Court's Analysis and Pivotal Findings

The Division Bench systematically addressed and rejected the appellant's arguments, upholding the single judge's reasoning.

1. Applicability of Section 35 to Passing Off

The court ruled that the protection under Section 35 extends to passing off actions. It reasoned that since Section 135 of the Act, which provides for relief like injunctions, covers both infringement and passing off suits, the limitation in Section 35 ("nothing in this Act") must apply to all reliefs granted under the Act.

"The words 'nothing in this Act' in Section 35 would, therefore, cover all reliefs available under Section 135 of the Act, which includes injunction both in the case of infringement as well as passing off," the judgment stated.

2. Use of a Part of a Name is Protected

The bench dismissed the argument that Section 35 only protects the use of a full name. It found no such limitation in the statutory language and noted that the Supreme Court in Precious Jewels had extended this benefit even to the use of a surname.

"A name is a name. It cannot be denied that VASUNDHARA was the name of Vasundhara Mantri. Mr. Sagar Chandra’s submission that the protection under Section 35 would be available only if the respondents were to use the full name 'Vasundhara Mantri', therefore, merely has to be stated to be rejected."

3. On the Doctrine of Estoppel

The court held that the appellant was estopped from arguing that the marks were deceptively similar. In a 2019 reply to the Trade Marks Registry, the appellant had asserted that the marks were different to overcome an objection. The court found this to be a classic case of 'approbate and reprobate'.

"The respondents’ mark is either deceptively similar to the appellant’s, or it is not. It cannot be that the mark is not deceptively similar before the Trade Marks Registry, but becomes deceptively similar before this Court."

4. Failure to Establish Prior Goodwill

For a successful passing off action, the appellant needed to demonstrate sufficient goodwill in its mark before the respondent began its use in 2001. The court found the appellant's sales figures and invoices from its first year of business (1999-2000) insufficient to establish such a reputation that could justify injuncting a business that has been operating for over 17 years.

Final Decision

The High Court concluded that the appellant had failed to make a case for interference with the single judge's discretionary order. Citing the principles laid down in Wander Ltd v Antox India Pvt Ltd , the bench emphasized that an appellate court should not substitute its own discretion for that of the trial court unless the decision is arbitrary, perverse, or ignores settled legal principles.

Finding no such error, the court affirmed the dismissal of the injunction application and dismissed the appeal, allowing M/s Vasundhara Fashion Jewellery LLP to continue using its mark during the pendency of the suit.