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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Vasundhra Jewellers Pvt. Ltd. – Appellant
Versus
Vasundhara Fashion Jewelery Llp & Anr. – Respondents
CS(COMM) 161 of 2022, I.A. 12076 of 2022 (seeking leave to file surrejoinder), I.A. 12737 of 2022 (O-XI R-10 of CPC), I.A. 15262 of 2022 (O-XI R-1(1)(c)(ii) for filing additional Documents)
Decided On : 19-07-2023
Interim Injunction - Trademark Dispute - Code of Civil Procedure, 1908 - [VASUNDHRA] - Trademark Dispute - Code of Civil Procedure, 1908 - Order XXXIX Rules 1 and 2 - Section 28(3) and Section 30(2)(e) of the Act - Section 35 of the Act - Passing off - Trademark infringement - [14]
Fact of the Case:
The plaintiff, a jewellery company, claimed to be the prior user and adopter of the mark 'VASUNDHRA' and sought a permanent injunction against the defendant, who was also using the mark 'VASUNDHARA' for identical goods and services. The defendant contended that it was the prior user of the mark 'VASUNDHARA' and had acquired goodwill and reputation in the market.
Finding of the Court:
The court found that both parties were registered proprietors of marks 'VASUNDHRA' and 'VASUNDHARA' in the same class, making an action for infringement not maintainable. The court considered the case in the context of passing off and found that the defendant was entitled to the benefit of defense under Section 35 of the Act. The court also noted that the plaintiff's claim of prior user and distinctiveness of the mark would be a matter of trial. The court dismissed the application for interim injunction.
Issues: Trademark infringement, passing off, prior user, distinctiveness of the mark, benefit of defense under Section 35 of the Act
Ratio Decidendi: The court held that the defendant was entitled to the benefit of defense under Section 35 of the Act as it had been using the mark 'VASUNDHARA' in a bona fide manner since 2001. The court also found that the plaintiff's claim of prior user and distinctiveness of the mark would be a matter of trial and could not be the basis for grant of interim injunction.
Final Decision: The court dismissed the application for interim injunction and stated that any observations made were only for the purposes of adjudication of the present application and would have no bearing on the final outcome of the suit.
JUDGMENT
I.A. 4154/2022 (O-XXXIX R-1 & 2 of the CPC)
1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for grant of interim injunction.
PROCEEDINGS IN THE SUIT
2. Summons in the suit and notice in the application was issued on 15th March, 2022. However, no ad interim injunction order was passed in favour of the plaintiff. Thereafter, the matter was listed on various dates and pleadings have been completed in the suit as well as the present application. The application was heard on 16th February, 2023, 16th March, 2023 and 20th April, 2023, when the judgment was reserved
CASE SET UP IN THE PLAINT
3. The case set up in the plaint is as under:
3.1. The Plaintiff Company was established on 28th October, 1999 under the name and style of "VASUNDHRA JEWELLERS PRlVATE LIMITED" and has been continuously and uninterruptedly using the name "VASUNDHRA/VASUNDHRA JEWELLERS" since then as a tradename and trademark. The Plaintiff deals in jewellery and has its jewellery showroom in New Delhi.
3.2. The plaintiff first adopted the trademark "VASUNDHRA" in the year 1999 for jewellery in precious metal and gems. The plaintiff uses several manners of representations for its trademark "VASUNDHRA" and has registrations in its favour in Class 14, the details of which are given in paragraph 9 of the plaint.
3.3. The plaintiff is also the owner of the domain name `www.vasundhrajewellers.com' since 26th June, 2011 and various other domain names consisting of `VASUNDHRA/VASUNDHRA JEWELLERS' as an essential part, the details of the same have been provided in paragraph 10 of the plaint. The plaintiff also has its presence on various social media platforms such as Facebook, Instagram, etc.
3.4. The plaintiff has filed CA Certificate to show its annual turnover generated under the "VASUNDHRA" mark from the financial year 19992000 to 2021-2022. The turnover of the plaintiff in the year 1999-2000 was Rs.19,80,812/-, whereas the turnover in the financial year 2021 to 4th March, 2022 was around Rs.79 crores. The plaintiff has also provided the advertising and promotional expenses incurred by it in respect of the "VASUNDHRA" trademark.
3.5. It is the case of the plaintiff 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.
3.6. Around June, 2019, the plaintiff came across the `VASUNDHARA' marks being used by the defendant no.1, which were cited in the Examination Report dated 18th June, 2019 issued by the Trade Mark Registry for the plaintiff's application no.4169987 for registration of the mark "VASUNDHRA JEWELLERS PRIVATE LIMITED" in Class 14.
3.7. In January, 2022, the plaintiff came across the official website of the defendant no.1, M/s Vasundhara Fashion Jewellery LLP, bearing the domain name, https://www.vasundhara.in/ (hereinafter `impugned domain name'). It was discovered that the defendant is also engaged in selling identical products and services i.e., jewellery and precious stones etc. Defendant no.2 is the domain name registrar of the impugned domain name. A perusal of the website revealed that the defendant no.1 is using the mark "VASUNDHARA" and its formative marks (Label/Device/Logo), for identical goods and services. The defendant no.1 supplies products bearing the impugned mark across India. The defendant no.1 also operates Instagram and Facebook accounts using the name "Vasundhara". The records on the website of Ministry of Corporate Affairs reflect that the defendant no.1 was incorporated on 21st January, 2016.
3.8. A cease-and-desist notice dated 24th February, 2022 was issued by the plaintiff to the defendant no.1. The aforesaid notice was replied to by the defendant no.1 on 3rd March, 2022 claiming user of the impugned marks from 1st J
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