Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Vasundhra Jewellers Pvt. Ltd. - Appellant
Versus
Kirat Vinodbhai Jadvani & Anr. - Respondents
CS(Comm) 363 of 2022
Decided On : 21-09-2022
VASUNDHRA - Trade Mark Infringement - Code of Civil Procedure, 1908, Section 151 - Trade Marks Act, 1999, Section 29(2)(b) - Trade Marks Act, 1999, Section 34 - Passing Off - Deceptive Similarity - Exclusive Right to Use - Common Name - Cognate Goods - Prima Facie Case
Fact of the Case:
The plaintiff, a jewellery company, sought an injunction against the defendant, a fashion company, for using the mark 'VASUNDHRA' for textiles, alleging trade mark infringement, passing off, and unfair competition. The plaintiff claimed exclusive rights to the mark due to continuous use and registrations. The defendant argued that its goods were different, targeted a different consumer base, and had developed goodwill in the mark.
Finding of the Court:
The court found that the plaintiff did not hold a registration in the word mark 'VASUNDHRA' and had only obtained registrations for device marks. It held that the plaintiff could not claim exclusive rights over the common name 'VASUNDHRA' and that the goods of the plaintiff and the defendant were distinct. The court concluded that the plaintiff had not established a prima facie case for grant of an injunction against the defendant.
Issues: Trade mark infringement, passing off, unfair competition, deceptive similarity, exclusive right to use, common name, cognate goods, prima facie case
Ratio Decidendi: The court considered the distinctiveness of the plaintiff's mark, the commonality of the name 'VASUNDHRA', the difference in goods and consumer base, and the defendant's goodwill in the mark. It held that the plaintiff had not demonstrated a prima facie case for the grant of an injunction.
Final Decision: The application for injunction was dismissed, with the court clarifying that its observations were prima facie in nature and would not prejudice the plaintiff in the adjudication of the suit or trial.
JUDGMENT
I.A. 8515/2022
1. By this application, filed under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short, 'CPC'), the plaintiff prays for an ad-interim injunction restraining the defendant no. 1, its directors, executives, partners or proprietors, officers, servants and agents or any other persons acting for or on their behalf from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using, directly or indirectly, in relation to any jewellery/precious stones/gems and/or any other allied and cognate goods/services, including but not limited to textiles, textile goods and fabrics, under the impugned marks/labels/logos/ domain name
2. It is the case of the plaintiff that the plaintiff-company was established on 28.10.1999 and has been continuously and uninterruptedly using the name 'VASUNDHRA'/'VASUNDHRA JEWELLERS' both as a trade mark as also a trade name. The plaintiff has its jewellery showroom at Pitampura, New Delhi, where the customers from not only Delhi but also all over India come to shop. The plaintiff asserts that over the years, it has used several iterations of the 'VASUNDHRA Marks',
registered proprietor of the various trade marks in Classes 14 and 35, the list whereof is given by the plaintiff in its plaint as under:-
3. The plaintiff asserts that by virtue of the abovementioned registrations, the plaintiff has an exclusive right to use the 'VASUNDHRA Marks'.
4. The plaintiff further asserts that it has obtained registration for its domain name www.vasundhrajewellers.com on 26.06.2011, and has subsequently obtained registrations in the following domain names:
a. www.vasundhra.com
b. www.vasundhara.com
c. www.vasundhra.in
d. www.Vasundhrajewellers.in
e. www.Vasundhrajewellers.com
f. www.vasundhrajeweller.in
5. The plaintiff also states that it has invested an enormous amount of money and effort in building the brand identity through the promotion of the 'VASUNDHRA Marks' through various media, included but not limited to TV, radio and hoardings.
6. The plaintiff has also engaged the services of popular Indian celebrities, including but not limited to Ms. Prachi Desai and Ms. Shweta Tewari. The goods of the plaintiff are regularly showcased at various fashion events and most recently in March 2022 in the 'FDCI X Lakme Fashion Week' (hereinafter referred to as 'Fashion Week'), where the actress Ms. Jahnvi Kapoor was the showstopper for the fashion designer Punit Balana, in which she wore the jewellery of the plaintiff.
7. The plaintiff asserts that it also sets up kiosks in various events and/or exhibitions to reach out to members of the trade and general public. It has also collaborated with eminent fashion designers, the details of whom are given in paragraph 15 of the plaint.
8. The plaintiff asserts that since its launch, the plaintiff has achieved unprecedented success with its sale figures having increased from Rs. 19,80,812/- (Rupees Nineteen Lakh Eighty Thousand Eight Hundred Twelve only) in the year 1999-2000 to Rs. 79,71,49,118/- (Rupees Seventy-One Crore Seventy-One Lakh Forty-Nine Thousand One Hundred Eighteen only) for the period 2021 till 04.03.2022. The plaintiff has also expended huge amounts for the promotional expenses on their 'VASUNDHRA Marks', which have increased from Rs. 43,254/- (Rupees Forty-Three Thousand Two Hundred Fifty-Four only) in the financial year 1999-2000 to Rs. 8,65,055/- (Rupees Eight Lakh Sixty-Five Thousand Fifty-Five only) for the period 2021 till 04.03.2022.
9. The plaintiff asserts that it has also been proactively defending its proprietary and statutory rights in the mark by initiating various oppositions and litigation against third parties, the details whereof have been given in paragraph 20 of the plaint.
10. The plaintiff asserts that it is only around April, 2022 that it came across the publication of the defendant no. 1's impugned mark/logo 'VASUNDHRA FASHION'/
in Class 25, bearing the applicat
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 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 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 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.
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 main legal point established in the judgment is the entitlement of the plaintiff to a permanent injunction for passing off its mark 'SANDHI SUDHA' and the consideration of the defendants' non-rep....
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
