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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
| 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
The court held that registration of trademarks does not grant exclusive rights over a common or partially generic term, emphasizing the need for distinctiveness to prevent confusion.
The plaintiff failed to establish exclusive rights over the common name 'VASUNDHRA', resulting in dismissal of the injunction application due to lack of a prima facie case.
The judgment emphasizes that the exclusive right to use a trade mark is limited to what has been registered and cannot extend to common names. It also highlights the importance of distinctiveness, go....
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.
Descriptive terms in trade, such as 'Sanjha Chulha', cannot be exclusively owned despite trademark registration; common usage undermines claims of infringement.
In trademark disputes, a plaintiff must establish goodwill to succeed in passing off actions, and demonstrating bona fide use prevails over prior use claims where underlying rights are transferred.
The court held that similar trademarks operating in different markets do not always lead to confusion, emphasizing the need to prove distinctiveness and absence of confusion under the Trade Marks Act....
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