Delhi High Court Refuses Injunction over use of the mark VASUNDHRA and holds it is a common name.
A jeweller and a readymade garment manufacturer are at loggerheads over the name VASUNDHRA. The Plaintiff, Vasundhara Jewelers Pvt Ltd (hereinafter VJPL) has brought trademark infringement and passing off action against Kirat Vinodbhai Jadhvani and others (hereinafter Defendants) for using the mark Vasundhra for readymade garments. The representation of both parties’ marks is depicted below
VJPL (VJPL’s) main contentions
- VJPL was established on 28th October 1999 and has been continuously and uninterruptedly using the name ‘VASUNDHRA’/’VASUNDHRA JEWELLERS’ both as a trademark and trade name.
- The VJPL has its jewellery showroom at Pitampura, New Delhi, where customers from not only Delhi but also all over India come to shop.
- The VJPL used several ‘VASUNDHRA Marks’ i.e., which are also registered in classes 14 and 35.
- The VJPL has obtained registration for its domain name www.vasundhrajewellers.com on 26th June 2011, and owns registrations for other domains, namely www.vasundhra.com,www.vasundhara.com,www.vasundhra.in, www.Vasundhrajewellers.in, www.Vasundhrajewellers.com, www.vasundhrajeweller.in.
- VJPL had invested an enormous amount of money and effort in popularising ‘VASUNDHRA Marks’ through various media, including using celebrities for brand endorsements.
- VJPL showcased their goods at various fashion events. They had most recently participated in March 2022 in the ‘FDCI X Lakme Fashion Week.
- The VJPL’s sales increased from Rs. 2 million approx. in the year 1999-2000 to Rs. 710 million+ in 2021-22.
Defendant’s main contentions
- The marks are different and distinguished by their representation and use of device. Therefore, there is no chance of any confusion being caused by the Defendant’s use of the mark ‘VASUNDHRA’ by the defendant.
- That class of goods are different; they are addressed to different strata of society, with the garments of the defendant being priced in the range of around Rs. 1000/- (Rupees One Thousand only) whereas the goods of the VJPL is high-end jewellery.
- That 80% of the business of the defendant is B2B and confined to the State of Gujarat. It is only 20% of the business of the defendant that is through e-commerce websites, that is, Flipkart and Meesho. On the other hand, VJPL is not selling its products online.
- The word ‘VASUNDHRA’ is a common name in India.
- The goods of the defendant and the VJPL are different, being textiles as opposed to jewellery.
- The VJPL has only a single shop in New Delhi and, therefore, cannot claim the pan-India reputation of the mark.
- Defendant has eighty persons employed at its two manufacturing units, four warehouses, and seven offline stores.
- The products of the defendant are popular on e-commerce websites resulting in own reputation among a specific stratum of society.
- The gross sales of the Defendant between the period December, 2020 to April 2022 was in excess of Rs. 133 million.
- There exists on register of trademarks other marks comprising ‘VASUNDHRA’ as the essential feature. Thus, the VJPL cannot claim any exclusive rights in the word ‘VASUNDHRA’, which is a common name in India, and especially in the State of Gujarat.
- The VJPL itself in response to examination report claims that the mark has to be read as a whole and being a device mark, therefore, no confusion is caused with the other marks which also use the word ‘VASUNDHRA’. Thus, the VJPL cannot be allowed to approbate and reprobate
- VJPL does not have a registration in the word mark ‘VASUNDHRA’ but has registrations for device marks in Class 14. On the other hand, defendant uses its device mark for goods falling in Classes 24 and 25, for which the VJPL has not filed any application for registration.
The Hon’ble Court dismissed the injunction application on the ground that VJPL did not have prima facie case for grant of interim injunction against the defendant. The Hon’ble court considered following facts to refuse the preliminary injunction:
- VJPLs hold registrations for all the device marks and no registration for the mark ‘VASUNDHRA’ per se exist in its favour.
- The registration and use of the mark of the VJPL is in a device of it, though ‘VASUNDHRA’ is a predominant part.
- ‘VASUNDHRA’ is a common name in India and an exclusive right to use the same cannot be granted to the VJPL.
- The VJPL distinguished other VASUNDHRA marks cited in examination report on the basis of entirety principle – the mark to be viewed as a whole. Hence, VJPL’s conduct is contradictory to their statement and thus they cannot be allowed to approbate and reprobate.
- The goods of the VJPL and the defendant are not identical, however, can be said to be remotely cognate to each other
- The rival marks though phonetically are identical, visually they are different as the VJPL’s mark has a symbol ‘V’ alongwith the word ‘VASUNDHRA’, while the defendant has a picture of a leaf along with word ‘VASUNDHRA Fashion’.
- The VJPL has only one store at Delhi, whereas the defendant has two manufacturing units, four warehouses, and seven offline stores. Its goods are available also online at Flipkart and Meesho, where the VJPL is not present.
- The area of operation of the VJPL and the defendant is also distinct; with the VJPL being in Delhi, while the defendant predominantly in the State of Gujarat.
- Merely because the VJPL deals in jewellery items, which are more costly resulting in a higher turnover for the VJPL, will not give a better right to them over a common name in India.
It is difficult to lay claim over a common word (that means earth in the Hindi language) and is in use by different businesses for a wide range of goods and services