INTRODUCTION  

In a significant ruling clarifying the scope of Section 35 of the Trade Marks Act, 1999, the Delhi High Court dismissed the appeal filed by Vasundhra Jewellers Pvt. Ltd. against Vasundhara Fashion Jewellery LLP & Anr., (FAO(OS) (COMM) 232/2023 & CM APPL. 55117/2023) reinforcing the principle that no one can be restrained from bona fide use of their own name in business. The Court’s judgment, delivered by Justice C. Hari Shankar and Justice Om Prakash Shukla, provides key insights into trademark protection, honest concurrent use, and the doctrine of estoppel in IP law.

NATURE OF CASE

This is a civil case involving intellectual property rights, specifically, trademark infringement and passing off disputes under the Trade Marks Act, 1999 falling within the domain of commercial and business competition law.

BACKGROUND

The appellant, Vasundhra Jewellers Pvt. Ltd., filed a suit seeking a permanent injunction and other reliefs against the respondents to restrain their use of the marks "VASUNDHARA" and "VASUNDHARA JEWELLERS," along with similar domain names and labels for jewellery and allied goods. The appellant alleged infringement of its registered trademarks and sought interim relief by way of injunction, which was denied by a learned Single Judge. Aggrieved by the refusal, the appellant filed this appeal before the Division Bench.

KEY FACTS

The case involves two parties disputing the use of the trademarks "VASUNDHRA" and "VASUNDHRA JEWELLERS." The appellant has claimed to have continuously and extensively used these trademarks since 1999, and they hold registrations in Class 14 for their jewellery products. They’ve also provided evidence showcasing their business turnover, promotional expenses, and ownership of pertinent domain names dating back to 2011. On the other hand, the respondent’s business traces its roots back to Vasundhara Mantri, who started using her first name as a brand mark in 2001. They registered the "VASUNDHARA" trademark in Class 14 in 2003, with all intellectual property rights subsequently assigned to a limited liability partnership. The respondent has presented historical documentation, including invoices and copyright registrations for their logo, along with domain registrations, demonstrating genuine use of their brand from 2001 to 2007. Interestingly, during trademark prosecution, the appellant had previously argued that "VASUNDHRA" and "VASUNDHARA" were not deceptively similar. It’s a complex situation with both sides presenting compelling evidence.

To know more about this you can follow the link below:

ISSUES

The case at hand revolves around a few key issues. Firstly, we need to determine if the appellant is entitled to seek either an interim or permanent injunction against the respondents, preventing them from using the mark "VASUNDHARA" or any similar marks in their jewellery business. Another point of consideration is whether Section 35 of the Trade Marks Act, 1999, provides the respondents with a legitimate defense for the bona fide use of the name "VASUNDHARA." Additionally, it's important to establish if the appellant has demonstrated sufficient prior usage and goodwill associated with the mark "VASUNDHARA" to support a claim for passing off. Lastly, we must examine if the appellant is barred from claiming similarity between the marks, especially after previously stating otherwise in earlier proceedings with the Trade Marks Registry.

HOLDING

The Division Bench decided to dismiss the appeal, supporting the Single Judge’s earlier decision not to grant an interim injunction. They found that the respondents have a valid right to use the mark "VASUNDHARA," thanks to statutory protection and the specific facts and circumstances of the case. Overall, it seems like a fair resolution based on the details presented.

KEY LEGAL PRINCIPLES

In the realm of trademarks, there are some important legal principles to keep in mind. First, Section 35 of the Trade Marks Act, 1999 provides protection for individuals using their own names or those of their predecessors in business, as long as that use is genuine. This applies not only to individual names but also to entities like LLPs. Additionally, if someone is claiming passing off, they need to demonstrate that there is a reputation or goodwill associated with their mark prior to the defendant’s use; in a recent case, it turned out that the appellant couldn't show enough goodwill before 2001, when the other party started operating. Another key point is estoppel, which means that parties can't take contradictory positions in different legal settings. For instance, the appellant previously claimed that the marks weren’t confusingly similar during trademark registry proceedings, so they couldn’t argue otherwise in court. Lastly, when it comes to interim relief, appellate courts are cautious about intervening unless there has been an obvious misuse of discretion. A significant delay in this case, 17 years between the adoption of the mark and the initiation of the lawsuit, made it difficult to argue for interim relief. Understanding these principles can be quite helpful for navigating trademark disputes.

REASONING

In this case, the respondent's use of the name "VASUNDHARA" was recognized as genuine and continuous, stemming from the founder's name, and therefore received protection under Section 35 of the Trade Marks Act, 1999. On the other hand, the appellant struggled to provide enough credible evidence to prove that they had established significant goodwill in the name "VASUNDHRA" before 2001, which was crucial for their claim of passing off. Additionally, the appellant's inconsistent statements during the proceedings led to an estoppel, which hindered their ability to argue that the two marks were deceptively similar. While the names are phonetically close, the court found enough differences in their visual appearance and spelling that make consumer confusion unlikely. Furthermore, the lengthy 17-year gap between when the respondent began using the mark and when the suit was filed weakened the arguments for interim relief based on the balance of convenience and potential irreparable harm. Overall, the ruling leaned in favor of the respondent, emphasizing the importance of established usage and clear distinctions between trademarks.

CONCLUSION

In conclusion, the appeal has been dismissed, and this decision reinforces the respondents' right to continue their bona fide use of the name "VASUNDHARA," which is protected under the law. It's important to recognize that the appellant was unable to provide sufficient evidence to support their claims of passing off, nor could they demonstrate a legitimate entitlement to an interim injunction. This outcome highlights the significance of upholding established rights and protections in disputes of this nature, ensuring that businesses can operate under their chosen names without unwarranted interference. Overall, it's a balanced resolution that favors fair usage while upholding the legal rights of the respondents.