Delhi High Court: In a suit filed by Vasundhara Jewelers Private Limited (‘plaintiff’), praying for an ad-interim injunction restraining the defendant from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using, in relation to any jewelry any other allied and cognate goods including but not limited to textiles, textile goods and fabrics, under the impugned marks or deceptively similar to the plaintiff’s trademarks i.e., ‘VASUNDHRA’ family of marks, Navin Chawla J. rejected prayer for injunction and held that merely because the plaintiff deals in jewelry items, which by themselves are more costly thereby resulting in a higher turnover for the plaintiff, will not give a better right to the plaintiff over an otherwise a common name in India.
The plaintiff-company was established on 28-10-1999 and has its jewellery showroom at Pitampura, New Delhi. It is also engaged in the services of popular Indian celebrities like Ms. Prachi Desai and Ms. Shweta Tewari. The goods of the plaintiff are regularly showcased at various fashion events like Lakme 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.
The plaintiff asserts that it is only around April, 2022 that it came across the publication of the defendant 1’s impugned mark/logo ‘VASUNDHRA FASHION’/ in Class 25, for goods being ‘textile, textile goods and fabrics.
The plaintiff asserts that the mark adopted by defendant 1 is deceptively similar to the ‘VASUNDHRA Marks’ of the plaintiff.
The Division Bench of this Court in Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd., 2011 SCC OnLine Del 288, reiterated that the distinctiveness to which the registered proprietor of a mark can lay a claim is to what it has gotten registered as a whole and such registration cannot possibly give an exclusive statutory right to such proprietor qua a particular word of common origin.
Placing reliance on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), the Court observed that the plaintiff does not have a registration in the word mark ‘VASUNDHRA’, while has obtained registration in the various marks of which ‘VASUNDHRA’ is an essential part, and it would have to be looked into for determining the balance of convenience and the effect thereof.
The Court opined that the goods of the plaintiff and the defendant 1 are not identical, however, can be said to be remotely cognate to each other. But, when compared as a whole, though phonetically the two marks are identical, visually they are different as the plaintiff’s mark has a symbol ‘V’ along with the word ‘VASUNDHRA’, while the defendant 1 has a picture of a leaf along with the word ‘VASUNDHRA Fashion’.
The Court enlisted reasons for the difference between the two marks
Defendant 1 herein claims to have two manufacturing units, four warehouses, and seven offline stores. Its goods are available also online at Flipkart and Meesho, where the plaintiff is not present.
The goods of the defendant 1 are aimed at persons belonging to the lower strata who are looking for cheaper garments while the goods of the plaintiff are claimed to be designer jewellery aimed at persons belonging to the higher strata of the society.
The goods of defendant 1 are in Classes 24 and 25, in which the plaintiff does not have any registration.
The area of operation of the plaintiff and the defendant 1 is also distinct; with the plaintiff being in Delhi, while the defendant 1 being predominantly in the State of Gujarat.
He Court remarked that as the plaintiff is dealing in jewellery, its turnover may sound enormous, but that alone may not be sufficient to, at least at this stage, presume that the mark has obtained such reputation and goodwill so as to be associated only with the plaintiff and for even other goods.
On the contention raised by the plaintiff that defendant has used its popular store mark ‘VASUNDHARA’ in a particular style in one of its stores, counsel for defendant assured that the said mark will never be used in the future.
Thus, the Court held the plaintiff has not been able to make out a prima facie case for grant of prohibitory interim injunction against the defendant 1.
[Vasundhara Jewelers Pvt Ltd. v. Kirat Vinodbhai Jadvani, CS (Comm] 363 of 2022, decided on 21-09-2022]
Advocates who appeared in this case:
For plaintiff: Mr. Sagar Chandra, Mr. Prateek Kumar, Ms. Shubhie Wahi, Ms. Sanya Kapoor, Mr. Parrek & Ms. Aarushi Jain, Advs.
For defendant: Mr. Raghavendra M. Bajaj, Mr. Anshuman Upadhyay, Mr. Naseem & Mr. Prashant, Advs. for D-1.
*Arunima Bose, Editorial Assistant has put this report together.