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IN THE HIGH COURT OF DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Vasundhra Jewellers Pvt. Ltd. - Appellant
Versus
Kirat Vinodbhai Jadvani - Respondent
FAO(OS)(COMM) No. 287 of 2022 & CM No. 43497 of 2022
Decided On : 13-10-2022
Important Points
Subject
Intellectual Property - Trademark Infringement
Headnote
(B) Registered trademarks - Registration does not confer exclusive rights to a partially generic term such as 'VASUNDHRA' - The appellant’s claim of the word being a dominant part of its trademarks was inadequately supported. (Paras 24, 25, 38)
(C) Prima facie case for injunction - The court held the appellant did not establish a prima facie case for granting the injunction against the respondent. (Paras 43, 44)
Facts of the case:
The appellant, incorporated in 1999, sought to restrain the respondent from using 'VASUNDHRA FASHION', claiming trademark rights due to its extensive use and registration of the 'VASUNDHRA' marks. (Paras 1-5)
Findings of Court:
The court affirmed the lower court's decision, dismissing the appeal, indicating that the appellant had not established a prima facie case. The word 'VASUNDHRA' was common and could not grant exclusive rights. (Paras 30, 36)
Issues: The main issues included the determination of whether the use of 'VASUNDHRA FASHION' by the respondent amounted to infringement and if the appellant was entitled to exclusive rights to the word 'VASUNDHRA'. (Paras 10, 26)
Ratio Decidendi: The court reasoned that the presence of 'VASUNDHRA' in both marks, along with its generic nature, did not create deceptive similarity, and thus no injunction was warranted. (Paras 43-44)
Result: Appeal dismissed.
| Table of Content |
|---|
| 1. background of the trademark dispute (Para 1 , 2) |
| 2. overview of trademark registrations by appellant (Para 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10 , 11 , 12 , 13) |
| 3. appellant's arguments for trademark infringement (Para 14 , 15 , 16) |
| 4. respondent's defense against appellant's claims (Para 17 , 18 , 19 , 20 , 21 , 22) |
| 5. court’s findings on trademark registration (Para 23 , 24 , 25) |
| 6. court’s observations on trademark similarity (Para 26 , 27 , 28 , 29 , 30 , 31 , 32 , 33) |
| 7. analysis of trademark exclusivity (Para 34 , 35 , 36) |
| 8. restrictions on appellant's trademark claims (Para 37 , 38 , 39 , 40 , 41 , 42) |
| 9. final judgment and dismissal of appeal (Para 43 , 44) |
JUDGMENT
Vibhu Bakhru, J. Vasundhra Jewellers Private Limited (hereafter `the appellant') has filed the present appeal impugning a judgment dated 21.09.2022 (hereafter `the impugned judgment') passed by the learned Single Judge, whereby the appellant's application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereafter `the CPC') was dismissed.
2. Respondent no. 1 carries on business in textiles and garments. The appellant had sought interim orders, inter alia, restraining respondent no.1 from using the trademark "VASUNDHRA FASHION/
", in connection with its business, claiming that the use of the said mark infringes its trademarks and amounts to passing off. The said interim relief was rejected and this has led the appellant to file the present appeal.
Factual Context
3. The appellant states that it was incorporated on 28.10.1999 and thereafter, it adopted the mark "VASUNDHRA/VASUNDHRA JEWELLERS" to commence the business of "jewellery in precious metals and gems". It operates one showroom at Pitampura in Delhi. It further states that it has been using the said name extensively, continuously and uninterruptedly. Therefore, the said marks have acquired immense goodwill and reputation.
4. Thereafter, on 23.05.2003, the appellant applied for registration of the device mark "
", claiming use of the mark since 01.01.1999, under Class 14 (trademark application no: 1200939). The said mark is registered and valid up till 23.05.2023. The appellant also states that on 26.06.2011, it obtained registration for its domain name, that is, www.vasundhrajewellers.com, and has further, obtained registrations of various other domain names, which are listed below:
i. www.vasundhra.com
ii. www.vasundhara.com
iii. www.vasundhra.in
iv. www.vasundhrajewellers.in
v. www.vasundhrajewellers.com
vi. www.vasundhrajeweller.in
5. On 19.12.2017, the appellant applied for the registration of the device mark "
", claiming use of the mark since 17.08.2016, under Class 14 (trademark application no: 3705706). The said mark is registered and valid till 19.12.2027.
6. On 22.05.2019, the appellant also applied for registration of the device mark "
7. The aforesaid registered trademarks of the appellant are hereafter collectively referred to as the `VASUNDHRA Trademarks'.
8. The appellant applied for registration of various other trademarks, including the word marks "VASUNDHRA JEWELLERS" and "VASUNDHRA JEWELLERS PRIVATE LIMITED". However, the registration of the aforesaid marks were opposed at the Trademark Registry.
9. The appellant claims that on account of the above-mentioned registrations, it has the exclusive right to use the VASUNDHRA Trademarks, including the name "Vasundhra". It further claims that it has spent a considerable amount of money and effort to establish its brand identity through the promotion and advertising of the said marks and the promotion expenses to advertise its brand have increased from Rs.43,254/- in the financial year 1999-2000 to Rs.8,65,055/- for the period 2021 till 04.03.2022. The appellant further claims that since the launch of its brand, its sales have increased from Rs.19,80,812/- in the year 1999-2000 to Rs.79,71,49,118/- for the period 2021 till 04.03.2021.
10. The appellant claims that in the month of April, 2022, it came a
