Delhi High Court: A Single Judge Bench of Amit Bansal, J.*, opined that the plaintiff’s marks, , and ) when compared as a whole with Defendant 1’s marks, , and , bear no deceptive similarity to each other and hence, would not create any confusion in the minds of consumers. Therefore, it could not be said that Defendant 1 was passing off its goods as those of the plaintiff. Thus, the plaintiff had failed to establish a prima facie case in its favour for the grant of interim injunction and balance of convenience was also against granting of interim injunction, on account of long use of Defendant 1, that is, since 2001.
The plaintiff was established in 1999 under the name and style of “VASUNDHRA JEWELLERS PRIVATE LIMITED” and had been using the name “VASUNDHRA/VASUNDHRA JEWELLERS” as a trade name and trade mark. The plaintiff first adopted the trade mark “VASUNDHRA” in 1999 for jewellery in precious metal and gems and used several manners of representations for its trade mark “VASUNDHRA” and had registrations in its favour in Class 14. The plaintiff was also the owner of the domain name ‘www.vasundhrajewellers.com’ since 2011 and various other domain names consisting of ‘VASUNDHRA/VASUNDHRA JEWELLERS’ as an essential part.
In 2019, the plaintiff came across the ‘VASUNDHARA’ marks being used by Defendant 1, which were cited in the Examination Report issued by the Trade Mark Registry for the plaintiff’s application for registration of the mark “VASUNDHRA JEWELLERS PRIVATE LIMITED” in Class 14. Further, in January 2022, the plaintiff came across the official website of Defendant 1, Vasundhara Fashion Jewellery LLP, bearing the domain name, ‘https://www.vasundhara.in’ (‘impugned domain name’). It was discovered that the defendant was also engaged in selling identical products and services, i.e., jewellery and precious stones, etc. The plaintiff submitted that perusal of the website revealed that Defendant 1 was 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. Defendant 1 also operated Instagram and Facebook accounts using the name “Vasundhara”. A cease-and-desist notice was issued by the plaintiff to Defendant 1. The aforesaid notice was replied to by Defendant 1 claiming user of the impugned marks from 2001. Accordingly, the present suit was filed seeking a decree of permanent injunction based on infringement and passing off.
Analysis, Law, and Decision
The Court noted that both the plaintiff and Defendant 1 were the registered proprietors of the marks ‘VASUNDHRA’ and ‘VASUNDHARA’ respectively in the same Class 14 in respect of jewellery products. Thus, the Court opined that both the marks were phonetically identical and since both the plaintiff and Defendant 1 were registered proprietors of an identical mark, in view of Section 28(3) read with Section 30(2)(e) of the Trade Marks Act, 1999 (‘Act’), an action for infringement would not be maintainable. The Court further opined that since the plaintiff had filed the present case for infringement and passing off, the case of the plaintiff, at the stage of grant of interim injunction, could be considered in the context of the relief of passing off.
The Court relied on Vasundhra Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani (‘Kirat Vinodbhai’), 2022 SCC OnLine Del 3370, wherein “the plaintiff had sought an interim injunction on the ground of infringement as well as passing off against the defendant, who was using the device mark “VASUNDHRA FASHION’ registered in Class 25 relating to ‘textile, textile goods and fabrics’. The Division Bench in Kirat Vinodbhai case (supra) affirmed the decision of the Single Judge wherein injunction was denied to the plaintiff on the ground that the word ‘VASUNDHRA’ was a common name in India and therefore, an exclusive right to use the same could not be granted to the plaintiff”. This Court further opined that the following observations of the Division Bench in Kirat Vinodbhai case (supra) were applicable to the present case:
‘VASUNDHRA’ was a generic/common word and there were several registered trade marks with the mark ‘VASUNDHRA’.
Exclusive monopoly could not be claimed on the mark ‘VASUNDHRA’ on account of registration of the composite mark including the aforesaid mark.
The plaintiff could not take a contrary stand to the one taken before the Registrar of Trade Marks while getting the mark registered.
The Court noted that the plaintiff in reply to the Examination Report in 2019, had taken a categorical stand that the spelling of the word ‘VASUNDHRA’ used by the plaintiff and the word ‘VASUNDHARA’ used by Defendant 1 was different and when the mark was read as a whole, it could not be considered to be similar or identical with that of Defendant 1. The plaintiff had further submitted that the letter “V” had been used by Defendant 1 in a stylized form, which was enough to create a distinction between the two marks and hence, there would be no confusion in the mind of the consumers.
The Court relied on Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38, wherein it was held that “a party that had made an assertion that its mark was dissimilar to a cited mark and obtains a registration based on that assertion, was not to be entitled to obtain an interim injunction against the proprietor of the cited mark, on the ground that the mark was deceptively similar. It was settled law that a person was not permitted to approbate and reprobate. A party making contrary assertions was not entitled to any equitable relief.”. Thus, the Court opined that the plaintiff could not take a contrary stand in the present suit to the effect that the mark of Defendant 1 was deceptively similar to that of the plaintiff. The plaintiff could not be permitted to approbate and reprobate.
Comparison of the marks of the plaintiff and Defendant 1:
Trade Marks of the Plaintiff
Trade Marks of Defendant 1
The Court opined that the comparison of the marks would show that there was a difference in spelling of the marks of the plaintiff and Defendant 1. The plaintiff used the mark ‘VASUNDHRA’, whereas the mark of Defendant 1 included an additional ‘A’, i.e., ‘VASUNDHARA’. Undoubtedly, both the marks were phonetically identical. However, apart from the difference in the spellings of the marks of the plaintiff and Defendant 1, the manner and style of writing was also completely different.
The Court further opined that the marks when compared as a whole bear no deceptive similarity to each other and hence, would not create any confusion in the minds of consumers. Therefore, it could not be said that Defendant 1 was passing off its goods as those of the plaintiff. Thus, the plaintiff had failed to establish a prima facie case in its favour for the grant of interim injunction and balance of convenience was also against granting of interim injunction, on account of long use of Defendant 1, that is, since 2001.
The matter would next be listed on 28-8-2023 before the Joint Registrar.
[Vasundhra Jewellers (P) Ltd. v. Vasundhara Fashion Jewellery LLP, 2023 SCC OnLine Del 4185, decided on 19-7-2023]
*Judgment authored by: Justice Amit Bansal
Advocates who appeared in this case :
For the Plaintiff: Sagar Chandra, Prateek Kumar, Shubhie Wahi, Sanya Kapoor, Aarushi Jain, Yojit Parcek, Advocates;
For the Defendants: Suvashish Sen Gupta, Pawan Kumar Maheshwari, Kumar Vivek Vibhu, Parve Khare, Advocates.