Delhi High Court Delivers Judgment on Trademark Infringement Case: Vasundhra Jewellers vs. Vasundhara Fashion Jewellery

In a recent landmark judgment, the Delhi High Court has ruled on a trademark infringement case between Vasundhra Jewellers Pvt. Ltd. And Vasundhara Fashion Jewellery LLP. The judgment, delivered on 19^th July 2023 by Hon’ble Mr. Justice Amit Bansal, sheds light on the application filed by the plaintiff seeking an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure.

The case revolved around the usage of the marks “VASUNDHRA” and “VASUNDHARA” in the field of jewellery. Vasundhra Jewellers claimed to be the prior user and adopter of the mark “VASUNDHRA,” alleging that Vasundhara Fashion Jewellery LLP was using the identical mark, causing confusion in the market.

After a thorough examination of the evidence and arguments presented by both parties, Justice Amit Bansal provided his analysis and findings. He observed that both Vasundhra Jewellers and Vasundhara Fashion Jewellery LLP were registered proprietors of the marks in Class 14, related to jewellery products. Based on Section 28(3) and Section 30(2)(e) of the Trademarks Act, the court concluded that an action for infringement would not be maintainable, as both parties were registered proprietors of the identical mark.

However, the court emphasized that the case could be considered in the context of passing off. Justice Bansal highlighted that Ms. Vasundhara Mantri, one of the designated partners of Vasundhara Fashion Jewellery LLP, had been using her own name “VASUNDHARA” in the jewellery business since 2001. It was further noted that she had obtained registrations and copyright for the mark and had gained reputation and goodwill in the market.

Moreover, the court referred to Section 35 of the Trademarks Act, which allows bona fide use of a person’s own name in business. Considering the facts presented, Justice Bansal opined that Vasundhara Fashion Jewellery LLP, being an extension of Ms. Vasundhara Mantri, was entitled to the benefit of the defense under Section 35. The court emphasized that the issue of prior user would be determined in the trial.

Furthermore, the court addressed the plaintiff’s reliance on a previous judgment in their own case, wherein it was held that the mark “VASUNDHRA” was a common/generic name. The court noted that the judgment was in the context of different goods and did not deal with the rights of a third party using the word “VASUNDHARA” in the jewellery business. The Supreme Court had clarified this aspect in a subsequent Special Leave Petition (SLP) filed by the plaintiff.

Considering all these factors, the court concluded that the plaintiff had not established the exclusivity of the mark “VASUNDHRA” and that there was no likelihood of confusion between the marks used by the plaintiff and the defendant. It was determined that the plaintiff could not take a contrary stand to its previous assertion and claim that the mark of the defendant was deceptively similar.

This judgment has significant implications for trademark infringement cases involving identical marks in the same class. It clarifies the application of Section 35 of the Trademarks Act and underscores the importance of establishing exclusivity and reputation in order to succeed in a passing off claim.

Speaking on the ruling, Mr. Sagar Chandra, advocate for Vasundhra Jewellers Pvt. Ltd., said, “While we respect the court’s decision, we believe that the distinctiveness and extensive use of the mark ‘VASUNDHRA’ should have been given more weight. We will evaluate the possibility of filing an appeal based on the specific grounds of the judgment.”

On the other hand, Mr. Suvashish Sen Gupta, advocate for Vasundhara Fashion Jewellery LLP, expressed satisfaction with the judgment, stating, “The court has recognized the long-standing usage and reputation associated with the mark ‘VASUNDHARA.’ We are pleased that our client’s rights have been upheld, and we hope this judgment sets a precedent for similar cases.”

Date of Decision: 19th July, 2023

VASUNDHRA JEWELLERS PVT. LTD.  vs VASUNDHARA FASHION  JEWELERY LLP & ANR.