Delhi High Court
Vasundhra Jewellers Pvt. Ltd. vs Kirat Vinodbhai Jadvani & Anr. on 21 September, 2022
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 25.08.2022
Date of decision: 21.09.2022
+ CS(COMM) 363/2022
VASUNDHRA JEWELLERS PVT. LTD. ..... Plaintiff
Through: Mr.Sagar Chandra, Mr.Prateek
Kumar, Ms.Shubhie Wahi,
Ms.Sanya Kapoor, Mr.Parrek &
Ms.Aarushi Jain, Advs.
Versus
KIRAT VINODBHAI JADVANI & ANR. ..... Defendants
Through: Mr.Raghavendra M. Bajaj,
Mr.Anshuman Upadhyay,
Mr.Naseem & Mr.Prashant, Advs.
for D-1.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 8515/2022
1.
By this application, filed under Order XXXIX Rules 1 and 2 read
with Section 151 of the Code of Civil Procedure, 1908 (in short, 'CPC'),
the plaintiff prays for an ad-interim injunction restraining the defendant
no. 1, its directors, executives, partners or proprietors, officers, servants
and agents or any other persons acting for or on their behalf from
manufacturing, selling, offering for sale, exporting, advertising,
marketing and/or in any manner using, directly or indirectly, in relation to
any jewellery/precious stones/gems and/or any other allied and cognate
goods/services, including but not limited to textiles, textile goods and
fabrics, under the impugned marks/labels/logos/ domain name
'VASUNDHRA'/ and/or 'VASUNDHRA
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FASHION'/ /https://vasundhra.business.site and/or any
other mark identical and/or deceptively similar to the plaintiff's trade
marks/labels/logos/domain name 'VASUNDHRA'/ 'VASUNDHRA
JEWELLERS'/ , the 'VASUNDHRA' family of
marks (hereinafter referred to as the 'VASUNDHRA Marks') /
https://vasundhrajewellers.com/ or doing any other thing amounting to
infringement of the plaintiff's registered 'VASUNDHRA Marks' as also
amounting to passing off, dilution and unfair competition.
2. It is the case of the plaintiff that the plaintiff-company was
established on 28.10.1999 and has been continuously and uninterruptedly
using the name 'VASUNDHRA'/'VASUNDHRA JEWELLERS' both
as a trade mark as also a trade name. The plaintiff has its jewellery
showroom at Pitampura, New Delhi, where the customers from not only
Delhi but also all over India come to shop. The plaintiff asserts that over
the years, it has used several iterations of the 'VASUNDHRA Marks',
including but not limited to
. The plaintiff is also the
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registered proprietor of the various trade marks in Classes 14 and 35, the
list whereof is given by the plaintiff in its plaint as under:-
Trade Mark Date of Class and Status Disclaimer/Condition
and Application Specification
Application No. And User of Goods and /Association
Detail Services
Date of [Class: 14] Registered NIL
Application: Jewellery In and Valid
Precious Up to:
Metal and
Gems. 23/05/2023
23/05/2003
User Detail:
01/01/1999
Date of [CLASS:14] Registered NIL
Application: and Valid
Precious Up to:
metals or
coated 22/05/2029
22/05/2019 therewith
jewellery
including
User Detail: imitation
jewellery and
28/10/1999 precious
stones. All
being goods
included in
class 14.
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Date of [CLASS: 14] Registered NIL
Application: and Valid
Precious Up to:
metals or
coated 19/12/2027
19/12/2017 therewith
jewellery
including
User Detail: imitation
jewellery and
17/08/2016 precious
stones. All
being goods
included in
class 14.
3. The plaintiff asserts that by virtue of the abovementioned
registrations, the plaintiff has an exclusive right to use the
'VASUNDHRA Marks'.
4. The plaintiff further asserts that it has obtained registration for its
domain name www.vasundhrajewellers.com on 26.06.2011, and has
subsequently obtained registrations in the following domain names:
a. www.vasundhra.com
b. www.vasundhara.com
c. www.vasundhra.in
d. www.Vasundhrajewellers.in
e. www.Vasundhrajewellers.com
f. www.vasundhrajeweller.in
5. The plaintiff also states that it has invested an enormous amount of
money and effort in building the brand identity through the promotion of
the 'VASUNDHRA Marks' through various media, included but not
limited to TV, radio and hoardings.
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6. The plaintiff has also engaged the services of popular Indian
celebrities, including but not limited to Ms. Prachi Desai and Ms. Shweta
Tewari. The goods of the plaintiff are regularly showcased at various
fashion events and most recently in March 2022 in the 'FDCI X Lakme
Fashion Week' (hereinafter referred to as '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.
7. The plaintiff asserts that it also sets up kiosks in various events
and/or exhibitions to reach out to members of the trade and general
public. It has also collaborated with eminent fashion designers, the details
of whom are given in paragraph 15 of the plaint.
8. The plaintiff asserts that since its launch, the plaintiff has achieved
unprecedented success with its sale figures having increased from Rs.
19,80,812/- (Rupees Nineteen Lakh Eighty Thousand Eight Hundred
Twelve only) in the year 1999-2000 to Rs. 79,71,49,118/- (Rupees
Seventy-One Crore Seventy-One Lakh Forty-Nine Thousand One
Hundred Eighteen only) for the period 2021 till 04.03.2022. The plaintiff
has also expended huge amounts for the promotional expenses on their
'VASUNDHRA Marks', which have increased from Rs. 43,254/-
(Rupees Forty-Three Thousand Two Hundred Fifty-Four only) in the
financial year 1999-2000 to Rs. 8,65,055/- (Rupees Eight Lakh Sixty-
Five Thousand Fifty-Five only) for the period 2021 till 04.03.2022.
9. The plaintiff asserts that it has also been proactively defending its
proprietary and statutory rights in the mark by initiating various
oppositions and litigation against third parties, the details whereof have
been given in paragraph 20 of the plaint.
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10. The plaintiff asserts that it is only around April, 2022 that it came
across the publication of the defendant no. 1's impugned mark/logo
'VASUNDHRA FASHION'/ in Class 25, bearing the
application No. 5277967 dated 08.01.2022, for goods being 'textile,
textile goods and fabrics'. Though the defendant no. 1 claims user since
02.12.2020, the plaintiff asserts that no document in support thereof has
been given by the defendant no. 1.
11. The plaintiff asserts that the mark adopted by the defendant no. 1 is
deceptively similar to the 'VASUNDHRA Marks' of the plaintiff.
12. The plaintiff further asserts that the defendant no. 1 is also
operating a website bearing the domain name
https://vasundhra.buiness.site, which is identical to that of the plaintiff.
The defendant no. 1's goods are also available for sale online on various
e-commerce websites like Flipkart, India Mart and Shopsy.
13. The plaintiff asserts that while the mark for which the defendant
no. 1 has applied for registration is as under:-
the defendant no. 1 is using the following mark on its stores:-
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14. The plaintiff asserts that the above conduct shows the dishonest
intention of the defendant no.1.
15. The plaintiff further asserts that the defendant no. 1 has
subsequently also opposed three applications for trade mark registration
made by the plaintiff, the details whereof are given in paragraph 28 of the
plaint.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
16. The learned counsel for the plaintiff submits that the plaintiff is the
prior and registered proprietor of the 'VASUNDHRA Marks', registered
for goods in Class 14; and the defendant no. 1 deals in allied goods, with
the mark of the defendant no. 1 being deceptively similar to that of the
plaintiff. Placing reliance on the judgment of the Supreme Court in
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, (1965) 1 SCR 737, he submits that 'VASUNDHRA' is an
essential feature of the trade mark of the plaintiff. The same has been
adopted by the defendant no. 1 and, therefore, in terms of Section
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29(2)(b) of the Trade Marks Act, 1999 (in short, 'the Act'), the use of the
mark by the defendant no. 1 for allied and cognate goods would amount
to infringement of the rights of the plaintiff in its trade mark. He submits
that the defendant no.1 is also guilty of passing off as well as dilution and
unfair competition.
17. He submits that the plea of the defendant no. 1, that the word
'VASUNDHRA' is a common name in India, cannot be accepted to
denude the right of the plaintiff in the said mark. Referring to Sections
2(1)(m) and 2(1)(zb) of the Act, the learned counsel for the plaintiff
submits that the trade mark may also include a 'name' so long as it is
capable of distinguishing the goods or services of one person from those
of others. In the present case, as the name itself has no connection with
the goods in question, it is capable of distinguishing the goods of the
plaintiff from the defendant no. 1 and, therefore, is entitled to protection
as a trade mark. In any case, as the defendant no. 1 itself has applied for
registration of its mark in 'VASUNDHRA' in Class 25, the defendant
no.1 is estopped from contending that the said mark is not entitled to
protection. In this regard, he places reliance on the judgment of this Court
Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 SCC OnLine
Del 27.
18. The learned counsel for the plaintiff further submits that the plea of
the defendant no. 1, that there are other marks registered with the
Registrar of Trade Marks bearing the name 'VASUNDHRA', is also
irrelevant inasmuch as mere presence of a mark in the Register of Trade
Marks is not evidence of its use. In this regard, he places reliance on the
judgment of this Court in Century Traders v. Roshan Lal Duggar &
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Co., 1977 SCC OnLine Del 50. In any case, the use of a mark by others
cannot act as a shield for the defendant no. 1 to infringe the trade mark of
the plaintiff. In support of this assertion, he places reliance on the
judgment of this Court in P.M. Diesels Ltd. v. S.M. Diesels, 1994 SCC
OnLine Del 117.
19. On the plea of the defendant no. 1 that the goods of the defendant
no. 1 and the plaintiff are different and not similar goods, being textiles
as opposed to jewellery, the learned counsel for the plaintiff places
reliance on the judgment of the High Court of Bombay in SIA Gems and
Jewellery Pvt. Ltd. v. SIA Fashion, Mumbai, 2003 SCC OnLine Bom
498, to submit that jewellery and fashion garments have been declared to
be cognate goods.
20. Placing reliance on the judgment of the Supreme Court in
Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65,
he submits that in any case, the Court will also have regard to the future
expansion prospects of the plaintiff's business and the connection of the
present business with fashion industry, as is evident from the plaintiff's
products being displayed in the Fashion Week and its association with
other fashion designers as mentioned hereinabove.
21. He submits that the stand taken by the plaintiff before the learned
Examiner of Trade Marks cannot act as an estoppel against the plaintiff
or be used to deny relief to the plaintiff, if the plaintiff is otherwise
entitled to the same. In support, he refers to the judgment of this Court in
Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019
SCC OnLine Del 8739.
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22. The learned counsel for the plaintiff also submits that the plaintiff
may have no objection if the defendant no. 1 confines its area of
operation to the State of Gujarat and on a business-to-business model (in
short, 'B2B Model').
23. On the other hand, the learned counsel for the defendant no. 1
submits that there is absolutely no chance of any confusion being caused
by the use of the mark 'VASUNDHRA' by the defendant no. 1. He
submits that the class of goods of the defendant no.1 is different from that
of the plaintiff; they are addressed to different strata of society, with the
garments of the defendant no. 1 being priced in the range of around Rs.
1000/- (Rupees One Thousand only) with nothing exceeding the said
amount, while the goods of the plaintiff are high-end jewellery, as per the
own contention of the plaintiff.
24. He submits that 80% of the business of the defendant no. 1 is not
only B2B but also confined to the State of Gujarat. It is only 20% of the
business of the defendant no. 1 that is through e-commerce websites, that
is, Flipkart and Meesho, where, in fact, the plaintiff is not present.
25. The learned counsel for the defendant no. 1 further submits that the
plaintiff has only a single shop at Pitampura, New Delhi and, therefore,
cannot claim pan-India reputation of the mark. On the other hand, the
defendant no. 1 has eighty persons employed at its two manufacturing
units, four warehouses and seven offline stores. Referring to the print
outs from the websites of Flipkart and Meesho, he submits that the
products of the defendant no. 1 are popular on these e-commerce
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websites and, therefore, the defendant no. 1's products have their own
reputation among a specific stratum of society. Between 31.05.2021 to
22.05.2022, the target consumers viewed the defendant no.1's products
60.14 Crore times, made 1.82 Crore clicks on its product listings and
purchased 1.89 Lakh units of its products translating to gross sales of Rs.
8.66 Crore on Flipkart alone. The defendant no.1's gross sales between
the period of December, 2020 to April 2022 was Rs. 13,30,84,966.80. He
submits that the defendants, therefore, have developed tremendous
goodwill and reputation in its mark.
26. He submits that the submission of the plaintiff that it hired Ms.
Janhvi Kapoor for showcasing its product is misleading as Ms. Kapoor
had modeled for designer Punit Balana's new lehenga collection and had
worn the plaintiff's jewellery as accessories only.
27. He further submits that various other marks which had
'VASUNDHRA' as the essential feature have been registered for various
classes of goods, the details whereof are given by the defendant no. 1. He
submits that, therefore, the plaintiff cannot claim any exclusive right to
the word 'VASUNDHRA', which is a common name in India, and
especially in the State of Gujarat.
28. The learned counsel for the defendant no. 1 also refers to the reply
dated 01.07.2019 submitted by the plaintiff to the Registrar of Trade
Marks against the Examination Report, wherein the plaintiff itself 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'. He submits that the plaintiff cannot be allowed
to approbate and reprobate.
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29. He submits that the plaintiff does not have a registration in the
word mark 'VASUNDHRA' but has registrations for device marks in
Class 14. On the other hand, the defendant no.1 uses its device mark for
goods falling in Classes 24 and 25, for which the plaintiff has not
preferred any application for registration. He submits that the defendant
no.1 is, therefore, entitled to the protection under Section 34 of the Act.
30. He further submits that even otherwise, the marks of the plaintiff
and the defendant no.1 are not likely to cause confusion as not only are
the two marks different, but also the marketplace, products, trade channel
are different. There is a huge difference in prices of the product and the
target consumer is also different. In support, the learned counsel for the
defendants relies upon the judgments of the Supreme Court in Nandani
Deluxe v. Karnataka Cooperative Milk Producers Federation Limited,
(2018) 9 SCC 183; of this Court in Mittal Electronics v. Sujata Home
Appliance (P) Ltd, C.S.(Comm) 60 of 2020 decided on 09.09.2020 and
N. Ranga Rao & Sons Private Limited v. Sree Annapoorna Agro
Foods, 2021 SCC OnLine Mad 2916.
FINDINGS OF THE COURT
31. I have considered the submissions made by the learned counsels
for the parties.
32. The marks of the plaintiff which have been duly registered have
been reproduced hereinabove. These are all device marks and the plaintiff
does not hold any registration in the word mark 'VASUNDHRA'.
Section 17 of the Act states that when a trade mark consists of several
matters, its registration shall confer on the proprietor exclusive right to
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the use of the trade mark taken as a whole and shall not confer any
exclusive right in the matter forming only a part of the whole of the trade
mark so registered. In The Registrar of Trade Marks v. Ashok Chandra
Rakhit Ltd., (1955) 2 SCR 252, the Supreme Court held that where a
distinctive label is registered as a whole, such registration cannot possibly
give any exclusive statutory right to the proprietor of the trade mark to
the use of any particular word or name contained therein apart from the
mark as a whole. The proprietor of the mark cannot expand the area of
protection granted to the mark. 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.
33. Though it is equally well settled that for device mark, the essential
feature of the same is equally entitled to protection [Ref:- South India
Beverages Pvt. Ltd. v. General Mills Marketing India, (2015) 61 PTC
231 (Del)], at the same time, it has to remembered that in extending such
protection, the party does not lay a claim of exclusivity in a mark to
which otherwise he would have been unable to do so. The possibility of
the proprietor attempting to expand the operation of his trade mark
cannot be ignored or overlooked. [Ref:- The Registrar of Trade Marks
vs. Ashok Chandra Rakhit Ltd. (supra)].
34. While considering the claim of exclusivity to the word
'VASUNDHARA' the claim made by the plaintiff before the Registrar
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of Trade Marks though may not act as an estoppel as held by this Court in
Telecare Network India Pvt. Ltd. (supra), it would still be a relevant
consideration. Before the Registrar of Trade Marks, the plaintiff had
sought to distinguish other cited marks with word 'VASUNDHRA' by
contending that the mark as a whole has to be considered. The plaintiff
cannot be allowed to approbate and reprobate.
35. As far as defendant no.1's application seeking registration of the
trade mark is concerned, equally the defendant no.1 would not be able to
claim any exclusive rights over the word 'VASUNDHRA'.
36. As far as the claim of passing off is concerned, in Cadila Health
Care Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), the
following test for deciding the question of deceptive similarity was laid
down:-
"35. Broadly stated in an action for passing-off
on the basis of unregistered trade mark generally
for deciding the question of deceptive similarity
the following factors are to be considered:
a) The nature of the marks i.e. whether the
marks are word marks or label marks or
composite marks i.e. both words and label works.
b) The degree of resembleness between the
marks, phonetically similar and hence similar in
idea.
c) The nature of the goods in respect of
which they are used as trade marks.
d) The similarity in the nature, character
and performance of the goods of the rival traders.
e) The class of purchasers who are likely to
buy the goods bearing the marks they require, on
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their education and intelligence and a degree of
care they are likely to exercise in purchasing
and/or using the goods.
f) The mode of purchasing the goods or
placing orders for the goods.
g) Any other surrounding circumstances
which may be relevant in the extent of
dissimilarity between the competing marks."
37. Let me now apply the above test to the facts of the present case.
38. In the present case, the fact 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 would have to be looked into for determining the balance of
convenience and the effect thereof. Equally, the fact that
'VASUNDHRA' is a common name in India would be an important
consideration to be kept in view while deciding the claim of exclusivity
made by the plaintiff. Though 'VASUNDHRA' cannot be said to be
descriptive of the goods of the plaintiff or the defendant no.1, at the same
time, it would have to be considered whether the plaintiff has been able
to make out a case for grant of injunction across all goods or for the
goods that are in question in the present suit.
39. The goods of the plaintiff and the defendant no.1 are not identical,
however, can be said to be remotely cognate to each other. [Ref:- SIA
Gems and Jewellery Pvt. Ltd. (supra)].
40. When compared as a whole, though phonetically the two marks are
identical, visually they are different as the plaintiff's mark has a symbol
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'V' alongwith the word 'VASUNDHRA', while the defendant no.1 has a
picture of a leaf alongwith word 'VASUNDHRA Fashion'.
41. It would also have to be considered that the plaintiff has only one
store at Delhi, while the defendant no.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. As contended by the learned counsel for the defendant no.1, the
goods of the defendant no.1 are aimed at persons belonging to 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. In any case, the goods of the defendant
no.1 are in Classes 24 and 25, in which the plaintiff does not have any
registration.
42. 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.
43. Keeping in view the above parameters, in my view, the plaintiff
has not been able to make out a prima facie case for grant of prohibitory
interim injunction against the defendant no.1. As noted hereinabove, the
registration and use of the mark of the plaintiff is in a device of it, though
'VASUNDHRA' is a predominant part. Equally, 'VASUNDHRA' is a
common name in India and an exclusive right to use the same cannot be
granted to the plaintiff. The goods of the plaintiff and the defendant no.1,
though cognate, are distinct. Presently, the plaintiff has not even
contended that it has plans of trade progression, that is, to expand its
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business to other goods including those of the defendant no.1. The area of
operation of the plaintiff and the defendant no.1 is also distinct; with the
plaintiff being in Delhi, while the defendant no.1 being predominantly in
the State of Gujarat. The defendant no.1 also has developed suitable
goodwill of the mark in its favour, as is evident from its claim of having a
gross sale of Rs. 13.30 Crore approximately between the period of
December, 2020 to April 2022. Merely because the plaintiff deals in
jewellery 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.
44. The plaintiff has asserted that the defendant no.1 has also used the
following mark:-
45. The learned counsel for defendant no.1 submits that the above
mark shall never be used in future. The defendant no. 1 shall remain
bound by this statement.
46. For the reasons stated hereinabove, the present application is
dismissed. It is, however, made clear that any observation made
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hereinabove shall not prejudice the plaintiff in the adjudication of the suit
or trial. The same being only prima facie in nature.
CS(COMM) 363/2022
List the matter before the Joint Registrar (Judicial) for further
proceedings on 28th October, 2022.
NAVIN CHAWLA, J.
SEPTEMBER 21, 2022/rv/DJ/AB
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