Delhi High Court
Vasundhra Jewellers Pvt. Ltd. vs M/S Vasundhara Fashion Jewelery Llp & ... on 19 July, 2023
Author: Amit Bansal
Bench: Amit Bansal
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 20th April, 2023
Judgment Delivered on: 19th July, 2023
+ CS(COMM) 161/2022, I.A. 12076/2022 (seeking leave to file sur-
rejoinder), I.A. 12737/2022 (O-XI R-10 of CPC), I.A. 15262/2022
(O-XI R-1(1)(c)(ii) for filing additional Documents)
VASUNDHRA JEWELLERS PVT. LTD. ..... Plaintiff
Through: Mr. Sagar Chandra, Mr.Prateek
Kumar, Ms. Shubhie Wahi, Ms.Sanya
Kapoor, Ms. Aarushi Jain and
Mr.Yojit Parcek, Advocates
versus
VASUNDHARA FASHION
JEWELERY LLP & ANR. ..... Defendants
Through: Mr.Suvashish Sen Gupta, Mr.Pawan
Kumar Maheshwari and Mr.Kumar
Vivek Vibhu, Advocates for
Defendant No.1.
Mr. Parve Khare, Advocate for
defendant No.2
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
JUDGMENT
I.A. 4154/2022 (O-XXXIX R-1 & 2 of the CPC)
1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for grant of interim injunction.
Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 1 of 21PROCEEDINGS IN THE SUIT
2. Summons in the suit and notice in the application was issued on 15th March, 2022. However, no ad interim injunction order was passed in favour of the plaintiff. Thereafter, the matter was listed on various dates and pleadings have been completed in the suit as well as the present application. The application was heard on 16th February, 2023, 16th March, 2023 and 20th April, 2023, when the judgment was reserved CASE SET UP IN THE PLAINT
3. The case set up in the plaint is as under:
3.1. The Plaintiff Company was established on 28th October, 1999 under the name and style of "VASUNDHRA JEWELLERS PRlVATE LIMITED"
and has been continuously and uninterruptedly using the name "VASUNDHRA/ VASUNDHRA JEWELLERS" since then as a tradename and trademark. The Plaintiff deals in jewellery and has its jewellery showroom in New Delhi.
3.2. The plaintiff first adopted the trademark "VASUNDHRA" in the year 1999 for jewellery in precious metal and gems. The plaintiff uses several manners of representations for its trademark "VASUNDHRA" and has registrations in its favour in Class 14, the details of which are given in paragraph 9 of the plaint.
3.3. The plaintiff is also the owner of the domain name 'www.vasundhrajewellers.com' since 26th June, 2011 and various other domain names consisting of 'VASUNDHRA/ VASUNDHRA JEWELLERS' as an essential part, the details of the same have been provided in paragraph Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 2 of 21 10 of the plaint. The plaintiff also has its presence on various social media platforms such as Facebook, Instagram, etc. 3.4. The plaintiff has filed CA Certificate to show its annual turnover generated under the "VASUNDHRA" mark from the financial year 1999- 2000 to 2021-2022. The turnover of the plaintiff in the year 1999 - 2000 was Rs.19,80,812/-, whereas the turnover in the financial year 2021 to 4th March, 2022 was around Rs.79 crores. The plaintiff has also provided the advertising and promotional expenses incurred by it in respect of the "VASUNDHRA" trademark.
3.5. It is the case of the plaintiff that due to prior adoption, registration and continuous use and extensive promotion of the VASUNDHRA marks, the same have acquired distinctiveness and the consumers associate the goods bearing the said marks exclusively with the plaintiff. 3.6. Around June, 2019, the plaintiff came across the 'VASUNDHARA' marks being used by the defendant no.1, which were cited in the Examination Report dated 18th June, 2019 issued by the Trade Mark Registry for the plaintiff's application no.4169987 for registration of the mark "VASUNDHRA JEWELLERS PRIVATE LIMITED" in Class 14. 3.7. In January, 2022, the plaintiff came across the official website of the defendant no.1, M/s Vasundhara Fashion Jewellery LLP, bearing the domain name, https://www.vasundhara.in/ (hereinafter 'impugned domain name'). It was discovered that the defendant is also engaged in selling identical products and services i.e., jewellery and precious stones etc. Defendant no.2 is the domain name registrar of the impugned domain name. A perusal of the website revealed that the defendant no.1 is using the mark "VASUNDHARA" and its formative marks (Label/Device/Logo), for Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 3 of 21 identical goods and services. The defendant no.1 supplies products bearing the impugned mark across India. The defendant no.1 also operates Instagram and Facebook accounts using the name "Vasundhara". The records on the website of Ministry of Corporate Affairs reflect that the defendant no.1 was incorporated on 21st January, 2016.
3.8. A cease-and-desist notice dated 24th February, 2022 was issued by the plaintiff to the defendant no.1. The aforesaid notice was replied to by the defendant no.1 on 3rd March, 2022 claiming user of the impugned marks from 1st June, 2001.
3.9. Accordingly, the present suit was filed seeking a decree of permanent injunction on the basis of infringement and passing off along with other ancillary reliefs.
CASE SET UP IN THE WRITTEN STATEMENT
4. The case set up by the defendant no.1 in its written statement is summarised below:
4.1. The defendant is, inter-alia, engaged in the business of designing jewellery of high quality and enduring materials along with ethically sourced precious stones and metals and also provides services in relation to jewellery through exhibition, display, wholesale and retail distribution of jewelleries, designer jewelleries, ornaments, sale and services through on-line stores and interactive websites.
4.2. Ms. Vasundhara Mantri is one of the designated partners with 99.09% shareholding in the defendant LLP and started her business with the house name, 'VASUNDHARA' in the year 2001.
Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 4 of 214.3. Ms. Vasundhara Mantri obtained registrations of the mark 'VASUNDHARA' in Class 14 and other classes on 1st June, 2001. Ms. Mantri had a unique artistic way of writing 'VASUNDHARA' in respect of which she obtained copyright registration on 25th February, 2005. Additionally, Ms. Mantri launched her website, 'www.vasundhara.in' in the year 2007 registered by the defendant no.2. She also advertised her jewellery in various magazines and exhibitions.
4.4. On 14th February, 2014, Ms. Mantri incorporated a company under the name 'VASUNDHARA CREATIVE JEWELLERY PRIVATE LIMITED', which was later changed to 'VASUNDHARA FASHION JEWELLRY PVT. LTD.' Subsequently, on 21st January, 2016 'VASUNDHARA FASHION JEWELLRY PVT. LTD.' was converted into an LLP in the name 'M/s Vasundhara Fashion Jewellry LLP' (defendant no.1). 4.5. By the virtue of Take Over Agreement dated 4th October, 2018 executed between Ms. Mantri and the defendant no.1, the defendant no.1 took over all the assets, liabilities and intellectual property rights of the sole proprietorship concern of Ms. Mantri. Further, Ms. Mantri also assigned all her intellectual property rights including goodwill in the mark 'VASUNDHARA' in favour of the defendant no.1 vide Assignment Agreement dated 28th March, 2019.
4.6. The CA certificates showing the annual sales figure of the defendant no.1 under the "VASUNDHARA" mark from the financial year 2001-2002 to 2020-2021 have been placed on record. The turnover of the defendant no.1 in the year 2001-2002 was Rs.48,200/-, whereas the turnover in the financial year 2018-2019 was around Rs.1.95 crores. The defendant no.1 has also provided the advertising and promotional expenses incurred by Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 5 of 21 defendant no.1 in respect of the "VASUNDHRA" trademark from the financial year 2006-2007 to 2020-2021.
4.7. The plaintiff has not placed on record any cogent material to show the user of its mark either from 1st January, 1999 or 28th October, 1999 i.e., the date of incorporation. Further, the plaintiff has not even produced incorporation certificate or invoices to show launch from 1st January, 1999. 4.8. The plaintiff in its reply to the Examination report issued by the Trade Mark Registry in connection with the trade mark application no. 4169987 has admitted that the plaintiff's mark is not identical and/or deceptively similar to that of the defendant no.1. Hence, the reliefs sought in the present suit are barred by principles of waiver, estoppel and acquiescence.
SUBMISSIONS OF THE PLAINTIFF
5. Counsel for the plaintiff has made the following submissions:
5.1. The plaintiff is the prior user and adopter of the mark 'VASUNDHRA'. The plaintiff is also the prior registrant of the aforesaid mark. The defendant no.1 was aware of the plaintiff's trademark registration since 2008, when the plaintiff's registration was cited in the Examination report dated 17th November, 2008 of the Trade Mark Registry for the registration of the impugned mark of the defendant no.1. 5.2. Since both the plaintiff and the defendant no.1 use an identical trademark and the justification given by the defendant no.1 for using the said trademark is that the trademark is a part of the name of Ms. Vasundhara Mantri, the defendant should use the full name as the trading name rather than using just 'VASUNDHARA'. The benefit of Section 35 of the Act can be only given to an individual and not to a corporate entity. Reliance in this Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 6 of 21 regard is placed on Section 35 of the Act and the judgment in Goenka Institute of Education & Research v. Anjani Kumar Goenka, 2009 SCC OnLine Del 1691 and Precious Jewels v. Varun Gems, (2015) 1 SCC 160. 5.3. Balance of convenience is also in favour of the plaintiff and against the defendant no.1. Since the plaintiff is the bigger player in the market, loss and injury is being caused to the plaintiff on account of the defendant no.1 using an identical trademark. The sales of the defendant no.1 are miniscule as compared to the sales of the plaintiff. Further, confusion is being caused in the market since both the plaintiff and the defendant no.1 are dealing in identical products.
5.4. Insofar as the plaintiff's reply dated 1st July, 2019 to the Examination Report dated 18th June, 2019 of the Trade Mark Registry is concerned, the Court has to decide the issue with regard to similarity of the marks and likelihood of confusion and admission by a party is not relevant.
SUBMISSIONS OF THE DEFENDANT NO.1
6. Counsels for the defendant no.1 has made the following submissions:
6.1. Since both the marks of the plaintiff and the defendant no.1 are registered in the same Class i.e., Class14, a suit for infringement is not maintainable in light of Section 28(3) and Section 30(2)(e) of the Act.
Insofar as the case of passing off is concerned, a comparison of the marks of the plaintiff and the defendant no.1 would show that the style of writing of the names is totally different.
6.2. In the plaintiff's own case Vasundhra Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 3370, the Division Bench has Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 7 of 21 held that the word 'VASUNDHRA' is a common/generic name and no exclusive right to use the same can be granted to a party. Further, it was noted by the Division Bench that the plaintiff itself has sought to distinguish its mark from other similar marks on the ground that the marks have to be considered as a whole and therefore, the plaintiff cannot be permitted to take a contrary stand.
6.3. The plaintiff has filed forged documents/invoices of the year 1999 to show prior user. The defendant is the prior user of the mark 'VASUNDHARA' 6.4. The predecessor-in-interest of the defendant no.1, Ms. Vasundhara Mantri was using her own name continuously and uninterruptedly as a trading name since the year 2001. Therefore, being a bona fide user, the defendant no.1 is entitled to the benefit of Section 35 of the Act. Reliance is placed on various articles in popular magazines, where the jewellery of Ms. Vasundhara Mantri has been featured. The defendant has also filed invoices from the year 2005 under the trading name of 'Vasundhara'. 6.5. In any event, the defendant no.1 is an honest and concurrent user as when the defendant no.1 adopted the impugned trade name there was no goodwill and reputation vesting in the plaintiff.
REJOINDER SUBMISSIONS OF THE PLAINTIFF
7. The judgment of the Division Bench in the plaintiff's own case in Kirat Vinodbhai (supra) was in the context of infringement and not passing off. Further, the competing goods were not identical and in SLP (Civil) 1270/2023 filed by the plaintiff against the aforesaid judgment, the Supreme Court has clarified that the impugned judgment does not deal with the Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 8 of 21 question or issue of rights of the plaintiff, viz. a third party using the word 'VASUNDHRA' in jewellery business.
ANALYSIS AND FINDINGS
8. I have heard the counsels for the parties.
9. It is an admitted position that both the plaintiff and the defendant no.1 are the registered proprietors of the marks 'VASUNDHRA' and 'VASUNDHARA' respectively in the same Class, i.e., Class 14 in respect of jewellery products. Both the marks are phonetically identical. Since both the plaintiff and the defendant no.1 are registered proprietors of an identical mark, in view of Section 28(3) read with Section 30(2)(e) of the Act, in my prima facie view, an action for infringement would not be maintainable. However, since the plaintiff has filed the present case for infringement as well as passing off, the case of the plaintiff, at the stage of grant of interim injunction, can be considered in the context of the relief of passing off. [Reference in this regard may be made to S.Syed Mohideen v. P. Sulochana Bai, 2016 (2) SCC 683]
10. In Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73, the essential elements for constituting passing off have been elucidated by the Supreme Court in the following terms:
"10. Under Section 28 of the Trade and Merchandise Marks Act on the registration of a trade mark in Part A or B of the register, a registered proprietor gets an exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. In the case of an unregistered trade mark, Section 27(1) provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 9 of 21 infringement of an unregistered trade mark. Sub-section (2) of Section 27 provides that the Act shall not be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. In other words in the case of unregistered trade marks, a passing-off action is maintainable. The passing-off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words a man is not to sell his goods or services under the pretence that they are those of another person. As per Lord Diplock in Erven Warnink BV v. J. Townend & Sons [(1979) 2 All ER 927] the modern tort of passing off has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."
11. The present case has to be examined under the light of aforesaid principles to determine if the defendant no.1 has passed off its goods as those of the plaintiff.
12. In this regard reference may be made to Section 35 of the Act, which is set out below:
"35. Saving for use of name, address or description of goods or services.--Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services."
13. Ms. Vasundhara Mantri started the business of designing jewellery in Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 10 of 21 her own name i.e., 'VASUNDHARA' in the year 2001. The defendant has placed on record copies of invoices from the year 2005 to show that Ms.Vasundhara Mantri was trading in the name of 'VASUNDHARA'. (Page no.152- 248 of the defendant's documents). The jewellery designed by Ms. Mantri has been featured in various Bollywood motion pictures as well as fashion shows such as Rome Fashion Week, 2006 and Wills Lifestyle India Fashion Week, 2007, 2008, 2009 and Couture weeks in 2007, 2008 and 2012. Further, various articles in newspapers and magazines have also been placed on record evidencing reputation in the relevant market sector.
14. As far back on 17th June, 2003, Ms. Vasundhara Mantri obtained registration of the device mark 'VASUNDHARA' with a user of 1st June, 2001. Subsequently, three other registrations in respect of device marks 'VASUNDHARA' were obtained by her, all showing user of 1st June, 2001. Ms. Vasundhara Mantri also had a unique artistic way of writing 'VASUNDHARA' in respect of which she obtained copyright registration as far back on 25th February, 2005. In the year 2007, she launched her website 'www.vasundhara.in' registered by the defendant no.2.
15. From the discussion above, it is evident that right from the beginning, Ms.Vasundhara Mantri has been using only part of her name i.e.,'Vasundhara' as her trading name.
16. On 14th February, 2014, she incorporated a company in the name of 'Vasundhara Creative Jewellery Private Limited', which was later renamed as 'Vasundhara Fashion Jewelery Private Limited' and was subsequently converted into an LLP, i.e., defendant no.1, incorporated on 21st January, 2016. It is an undisputed fact that Ms. Mantri holds 99.09% shareholding in Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 11 of 21 the defendant no.1.
17. All the assets, liabilities as well as intellectual property rights of Ms.Vasundhara Mantri were transferred to the defendant no.1 vide Takeover Agreement dated 4th October, 2018. Further, various other intellectual property rights, including goodwill in the mark 'VASUNDHARA' was transferred by Ms. Vasundhara Mantri in favour of the defendant no.1 vide Assignment Agreement dated 28th March, 2019.
18. In Goenka Institute (supra), the Single Judge granted an interim injunction in favour of the plaintiff restraining the defendant from offering its services in the field of education under the impugned trademark. However, the interim injunction granted by the Single Judge was set aside by the Division Bench. Though the Division Bench made certain observations to the effect that defence under Section 35 of the Act shall apply to a full name and only to a natural person and not a legal entity, yet the Division Bench did not grant interim injunction on the ground that the appellant therein was an honest concurrent user. In the present case also, the discussion above demonstrates that Ms. Vasundhara Mantri was an honest and concurrent user. There is nothing to show that the plaintiff had established goodwill and reputation in the year 2001 when Ms. Vasundhara Mantri started trading in jewellery in her own name.
19. In Precious jewels (supra), the Supreme Court relying upon the provisions of Section 35 of the Act vacated the injunction order restraining the defendant from using the surname 'RAKYAN' in respect of their jewellery shop. The Supreme Court noted that 'RAKYAN' was the surname of the partners of the plaintiff and the defendant firm and therefore, the defendant cannot be restrained from using their common surname in a bona Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 12 of 21 fide manner for the purposes of their business. The observations of the Supreme Court in paragraph 9 of the judgment are set out below:
"9. As stated hereinabove, Section 35 of the Act permits anyone to do his business in his own name in a bona fide manner. In the instant case, it is not in dispute that the defendants are doing their business in their own name and their bona fides have not been disputed. It is also not in dispute that the plaintiff and defendants are related to each other and practically all the family members are in the business of jewellery. We have perused the hoardings of the shops where they are doing the business and upon perusal of the hoardings we do not find any similarity between them."
20. From the above quoted paragraph it is clear that there is no absolute proposition of law that the benefit of Section 35 of the Act would be available only in respect of full name. There is nothing in the language of section 35 of the Act to suggest that the defence is available only in respect of the full name.
21. From the facts noted above, it is evident that Ms. Vasundhara Mantri has been trading in her own name 'VASUNDHARA' since 2001 in a bona fide manner. It is only in the year 2018 that an LLP, the defendant no.1, was incorporated by her, but the fact remains she holds 99.09% share in the defendant no.1 LLP. Accordingly, the defendant no.1 is nothing but an extension or an alter ego of Ms. Vasundhara Mantri. Therefore, in my prima facie view, the defendant no.1 will be entitled to the benefit of defence under Section 35 of the Act.
22. Counsel for the defendant no.1 has highlighted that the invoices filed by the plaintiff of the year 1999, which are hand written, show the domain name of the plaintiff i.e., 'www.vasundhra.com', which was unimaginable Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 13 of 21 in the year 1999. He has further drawn attention of the Court to the invoice of the plaintiff dated 17th August, 2016 (Page no.36 of the plaintiff's documents) in which Goods and Services Tax (GST) has been levied, even though the GST came into effect from 1st July, 2017 after the enactment of the 101st Constitution Amendment Act, 2016. All these aspects raise a reasonable doubt with regard to the genuineness of the plaintiff's invoices and these aspects can only be determined in the trial. Therefore, whether the plaintiff is a prior user of the mark 'VASUNDHRA' would be a matter of trial.
23. Next, reference may be made to the judgment of the Division Bench in the plaintiff's own case, Kirat Vinodbhai (supra). In the said case, 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 Single Judge had denied injunction to the plaintiff/appellant, inter alia, on the ground that the word 'VASUNDHRA' is a common name in India and therefore, an exclusive right to use the same cannot be granted to the plaintiff. The aforesaid findings of the Single Judge were affirmed by the Division Bench and the appeal filed was dismissed. The relevant observations of the Division Bench are set out below:
"38. Second, the word 'Vasundhra' is a generic word and it is brought on record that there are several registered trademarks, which include the word 'Vasundhra'. Further, 'Vasundhra' in Hindi means the earth or the bearer of all. Thus, intrinsically, the word 'Vasundhra' would be a weak trademark. Although it Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 14 of 21 is possible for a proprietor to claim exclusive right in respect of the word 'Vasundhra', however, for that, it would be necessary to establish on account of extensive use, the said common word has been identified exclusively with the business of the proprietor and no other. Prima facie, it is difficult to accept that the appellant meets the said threshold. The learned Single Judge had noted that the appellant has a single store. Although the appellant's turnover is about Rs. 79 crores, it pertains to high value items and therefore, does not necessarily establish the reputation associated with the VASUNDHRA Trademarks.
39. The observations in the impugned judgment that" 'VASUNDHRA' is a common name in India and an exclusive right to use the same cannot be granted to the plaintiff" has to be read in the aforesaid context. The learned Single Judge had found that the word 'Vasundhra' was a part of the composite marks and the appellant did not have exclusive monopoly over the word 'Vasundhra' merely on account of registration of composite marks including the said words.
40. It is also relevant to note that the learned Single Judge had also noted that before the Registrar of Trademarks, the appellant had sought to distinguish other trademarks, which included the word 'Vasundhra', by claiming that the VASUNDHRA Trademarks were required to be considered as a whole. Thus, it is not open for the appellant now to take a contrary stand and claim that the device mark "VASUNDHRA FASHION/ " is deceptively similar to the VASUNDHRA Trademarks on the ground that it includes the word 'Vasundhra'."
24. The SLP (civil) 1270/2023 filed against the aforesaid judgment was dismissed by the Supreme Court vide order dated 10th April, 2023 while clarifying that the judgment of the Division Bench "does not deal with the question or issue of rights of the petitioner viz. a third party using the word Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 15 of 21 Vasundhara in jewellery business".
25. The aforesaid observation of the Supreme Court does not in any manner dilute the aforesaid observations of the Division Bench, which are fully applicable in the present case. Even though the aforesaid judgment was in the context of infringement and dissimilar goods, the following observations of the Division Bench would be squarely applicable to present case:
i. 'VASUNDHRA' is a generic/common word and there are several registered trademarks with the mark 'VASUNDHRA'. ii. Proprietor can claim exclusive right on the mark only after establishing exclusivity of the mark with the business of proprietor on account of extensive usage.
iii. High turnover of the plaintiff because of the products being of high value cannot be the determinant factor for establishing reputation. iv. Exclusive monopoly cannot be claimed on the mark 'VASUNDHRA' on account of registration of the composite mark including the aforesaid mark.
v. The plaintiff cannot take a contrary stand to the one taken before the Registrar of Trademarks while getting the mark registered.
26. As regards the contention of the plaintiff that the mark 'VASUNDHRA' has acquired exclusiveness on account of long user, in my view, this aspect can only be examined in a trial and cannot be the basis for grant of interim injunction. Just because the volume of sales of the plaintiff is higher than that of the defendant no.1, this by itself cannot be the basis for grant of interim injunction in favour of the plaintiff in view of the observations of the Division Bench summarized above.
Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 16 of 2127. At this stage, a reference may be made to the plaintiff's reply dated 1st July, 2019 to the Examination Report dated 18th June, 2019 issued by the Trade Mark Registry in connection with the trademark application no.4169987 filed by the plaintiff for registration of the word mark 'VASUNDHRA JEWELLERS PRIVATE LIMITED'. In the said reply, the plaintiff had taken a categorical stand that the spelling of the word 'VASUNDHRA' used by the plaintiff and the word 'VASUNDHARA' used by the defendant no.1 is different and when the mark is read as a whole, it cannot be considered to be similar or identical with that of the defendant no.1. It was further stated that the letter "V" has been used by the defendant no.1 in a stylized form, which is enough to create a distinction between the two marks and hence, there would be no confusion in the mind of the consumers.
28. In view of the aforesaid stand taken by the plaintiff, the plaintiff cannot take a contrary stand in the present suit to the effect that the mark of the defendant no.1 is deceptively similar to that of the plaintiff. The plaintiff cannot be permitted to approbate and reprobate. Reliance in this regard may be placed on the judgment in Raman Kwatra v. KEI Industries Limited, 2023 SCC OnLine Del 38, the relevant extract of which is set out below:
"43. We also find merit in the appellant's contention that a party, that has obtained the registration of a trademark on the basis of certain representation and assertions made before the Trade Marks Registry, would be disentitled for any equitable relief by pleading to the contrary. The learned Single Judge had referred to the decision in the case of Telecare Networks India Pvt. Ltd. v. Asus Technology Pvt. Ltd. (supra) holding that after grant of registration neither the Examination Report nor the plaintiff's reply would be relevant. We are unable to agree with the said view. In that case, the Court had also reasoned Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 17 of 21 that that there is no estoppel against statute. Clearly, there is no cavil with the said proposition; however, the said principle has no application in the facts of the present case. A party that has made an assertion that its mark is dissimilar to a cited mark and obtains a registration on the basis of that assertion, is not to be entitled to obtain an interim injunction against the proprietor of the cited mark, on the ground that the mark is deceptively similar. It is settled law that a person is not permitted to approbate and reprobate. A party making contrary assertions is not entitled to any equitable relief."
29. A comparison of the marks of the plaintiff and the defendant no.1 is given below:
S.NO. TRADEMARKS OF TRADEMARKS OF DEFENDANT
PLAINTIFF NO.1
1.
Application No.- 1200939
Application No.- 1207102
Date of Application: 23/05/2003
Date of Application: 17/06/2003
User Detail: 01/01/1999
User Detail: 01/06/2001
[Class: 14] Jewellery In Precious
[Class: 14] Precious Metals or coated
Metal And Gems.
therewith, Jewellery including imitation
Jewellery and Precious Stones all being
goods included in class 14.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:19.07.2023
CS(COMM) 161/2022 14:39:50 Page 18 of 21
2.
Application No.- 1671186
Application No.- 4183139 Date of Application: 01/04/2008
Date of Application: 22/05/2019 User Detail: 01/06/2001
User Detail:28/10/1999 [Class: 14] Goods of precious metals or
[Class 14] Precious metals or coated therewith, Jewellery including
coated therewith jewellery imitation Jewellery and Precious Stones
all being goods included in class 14.
including imitation jewellery and
precious stones. All being goods
included in class 14.
3.
Application No.- 2645427
Date of Application: 19/12/2013
User Detail: 01/06/2001
Date of Application: 19/12/2017 [Class: 14] Precious Metals or coated
User Detail: 17/08/2016 therewith, Jewellery including imitation
[CLASS: 14]: Precious metals or Jewellery and Precious Stones.
coated therewith jewellery
including imitation jewellery and
precious stones. All being goods
included in class 14.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:19.07.2023
CS(COMM) 161/2022 14:39:50 Page 19 of 21
4.
Application No.- 3041398
Date of Application: 22.08.2015
User Detail: 01/06/2001
[Class: 42] Jewellery Designing
30. The comparison of the above would show that there is a difference in spelling of the marks of the plaintiff and the defendant no.1. The plaintiff uses the mark 'VASUNDHRA', whereas the mark of the defendant no.1 includes an additional 'A' i.e., 'VASUNDHARA'. Undoubtedly both the marks are phonetically identical. However, apart from the difference in the spellings of the marks of the plaintiff and the defendant no.1, the manner and style of writing is also completely different. The plaintiff itself in its reply to the Examination Report dated 18th June, 2019 of the Trade Mark Registry, stated that there is no similarity and therefore, the same would not create any confusion in the minds of consumers when read as a whole. In my prima facie view, 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 cannot be said that the defendant no.1 is passing off its goods as those of the plaintiff.
31. In view of the discussion above, the plaintiff has failed to establish a prima facie case in its favour for the grant of interim injunction. Balance of convenience is also against granting interim injunction, on account of long user of the defendant no.1 since 2001.
32. I do not find merit in the present application under Order XXXIX Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 20 of 21 Rules 1 and 2 of the CPC.
33. Dismissed.
34. Needless to state, any observations made herein are only for the purposes of adjudication of the present application and would have no bearing on the final outcome of the suit.
CS(COMM) 161/2022
35. List before the Joint Registrar on 28th August, 2023 for further proceedings.
AMIT BANSAL, J.
JULY 19, 2023 at Signature Not Verified Digitally Signed By:AMIT BANSAL Signing Date:19.07.2023 CS(COMM) 161/2022 14:39:50 Page 21 of 21