Delhi High Court: An appeal was filed by Vasundhra Jewellers Pvt. Ltd. (Vasundhra Jewellers Pvt. Ltd.) challenging order dated 19-07-2023 passed by a Single Judge of this Court in a suit filed seeking permanent injunction, restraining the respondents and all others acting on their behalf from manufacturing, selling, exporting, advertising or in any other manner dealing with jewellery, precious stones, gems and any other allied or cognate goods or services under the marks and domain names VASUNDHARA JEWELLERS, VASUNDHRA, or , the domain name www.vasundhara.in or any other mark, label or domain name which is identical or deceptively similar to the appellant’s marks VASUNDHRA, VASUNDHRA JEWELLERS, or VASUNDHRA. A division bench of C. Hari Shankar and Om Prakash Shukla, JJ., found no grounds to interfere with the impugned order due to absence of establishment of sufficient goodwill possessed by the appellant in the mark VASUNDHRA prior to the commencement of user, by the respondents, of the mark VASUNDHARA, no case of passing off can be set to exist, and the appellant cannot be held to be entitled to any injunction against the respondents.
The dispute arose from a contest over the trademark “VASUNDHRA”, which had been used in the jewellery business. The appellant claimed to be the prior user of the mark “VASUNDHRA” in respect of jewellery and allied goods. The appellant asserted that the business was established decades earlier and had acquired goodwill and reputation under the said mark. The appellant alleged that the respondents, operating as Vasundhara Fashion Jewellery LLP, had dishonestly adopted an identical mark “VASUNDHARA” in the jewellery industry, thereby creating confusion and attempting to ride upon the goodwill built by the appellant.
The appellant-initiated proceedings seeking injunction and other reliefs on grounds of trademark infringement and passing off. The Single Judge of the Delhi High Court, however, declined interim relief to the appellant, holding that a prima facie case in favour of the appellant was not made out. Thus, the present appeal was filed.
The appellant contended that the Single Judge had erred in refusing interim protection as the appellant was the prior adopter and user of the mark “VASUNDHRA” in relation to jewellery and had built extensive reputation and goodwill. The adoption of an identical mark “VASUNDHARA” by the respondents, also in the jewellery business, was argued to be dishonest and intended to confuse the public. It was submitted that the respondents had not provided any credible justification for adopting the same name in the same trade, which indicated mala fides. The appellant emphasised that the similarity between the two marks was likely to cause deception among customers.
The respondents, on the other hand, contended that they were also bona fide users of the mark “VASUNDHARA” and had independently built goodwill under the same. It was urged that the mark was derived from the personal name of one of the partners of the respondent firm, and hence its adoption was natural and honest. They further contended that there was no deceptive similarity in the way the rival marks were used, especially considering the overall trade dress, get-up, and stylisation. It was also argued that the appellant had delayed in approaching the court despite being aware of the respondents’ use, and such delay disentitled the appellant to interim relief.
The Court examined the material placed before it and noted that the controversy turned substantially on the question of prior user of the mark “VASUNDHRA”. Both sides had claimed to be long-standing users, but the precise nature of evidence and its sufficiency could only be determined after trial.
The Court observed that at the interim stage, the Single Judge had weighed the rival claims and found that the appellant had not established a strong prima facie case warranting injunction. The Court observed that in appellate jurisdiction, it would not be appropriate to substitute its own discretion for that of the Single Judge unless the exercise of discretion was manifestly erroneous or perverse.
On the applicability of Section 35 of Trade Marks Act, the respondent submitted that the mark VASUNDHARA was adopted as the name of Vasundhara Mantri, who was the original proprietor of the proprietorship in whose name the registration of the device mark was obtained on 17-06-2003 claiming user from 01-06-2001, Section 35 operates as a proscription against the appellant injuncting use by the respondents of the said mark. The Court noted that the intellectual property rights of Vasundhara Mantri in the mark VASUNDHARA were assigned to Respondent 1 under the Assignment Deed dated 28-03-2019. Respondent 1, therefore, succeeded to the intellectual property rights of Vasundhara Mantri in the mark VASUNDHARA. Inasmuch as those rights were availed by an individual, the benefit of Section 35 would also be available to Respondent 1 as the assignee-in-interest of the intellectual property rights earlier held by Vasundhara Mantri.
The Court remarked “the use by the respondents of the mark VASUNDHARA is completely bona fide. VASUNDHARA was used by Vasundhara Mantri. It was her own name. There is nothing whatsoever on record on the basis of which her bona fides could be questioned. She has been using the mark without interruption since 2001 or, even as per the appellant’s own showing, since 2005. The use of the mark VASUNDHARA by Vasundhara Mantri, and later by Respondent 1 has, therefore, necessarily to be treated as bona fide.” Thus, the Court noted that the respondents would be entitled to the benefit of Section 35 of the Trade Marks Act. De hors the issue of infringement or passing off, therefore, the respondents cannot be denied the right to use the mark VASUNDHARA, in view of Section 35 of the Trade Marks Act.
The Court further remarked that “the fact that the respondents claim user of the mark VASUNDHARA since 1 June 2001. Even as per the appellant, the respondents had commenced use of the mark at least since 2005. The suit came to be instituted by the appellant in 2022, 17 years after the respondents had admittedly commenced use of the mark VASUNDHARA. It can hardly be said that, in the lone year 2000-2001, the appellant had accumulated sufficient goodwill to injunct the respondents from using a mark which it had been using for 17 years thereafter, before the suit came to be filed.”
On the plea of estoppel, the Court explained the plea being a species of approbate and reprobate. It operates to restrain a party from adopting two diametrically opposing stands, on the same subject matter. Thus, the Court said that the appellant had specifically contended, in response to the FER of the Trademarks Registry, that there was no confusing or deceptive similarity between the mark VASUNDHARA and VASUNDHRA. Having adopted such a stand at that stage, the appellant cannot, now, be permitted to execute a volte face and contend exactly to the contrary.
The Court further noted that in trademark disputes, interim injunctions are not granted as a matter of course and the balance of convenience, along with irreparable injury, must be assessed. In this case, both parties were in the same line of business, both claimed longstanding use, and the respondents had a justification for adopting the mark being based on a personal name. Thus, the grant of injunction could not be said to be a matter of right at this stage.
The Court affirmed the order of the Single Judge and refused to interfere with the order denying interim injunction to the appellant.
[Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewellery LLP, 2025 SCC OnLine Del 5660, decided on 18-08-2025]
Advocates who appeared in this case:
Mr. Sagar Chandra, Mr. Prateek Kumar, Ms. Aarushi Jain, Mr. Yojit Pareek, Ms. Shubhie Wahi, Ms. Sanya Kapoor, Ms. Ankita, Mr. Prasant Kr. Sharma and Mr. Chetan Charitra, Advocates for appellants
Mr. Shuvasish Sen Gupta, Mr. Kumar Vivek Vibhu, Mr. Pawan Maheshwari and Mr. Bhavesh Garodia Advocates for respondents
