Introduction:
Plaintiff-company was formed on October 28, 1999, and has been using the names “VASUNDHRA” and “VASUNDHRA JEWELLERS” simultaneously ever since both as a commercial name as well as a trademark. Customers seek plaintiff’s jewellery showroom in Pitampura, New Delhi, from all around India. The plaintiff is also registered proprietor of various marks in class 14 and 35. The plaintiff obtained domain name http://www.vasundhrajewellers.com on 26.06.2011 and further obtained registration in various domain name.
The plaintiff has put a significant amount of time, money, and effort into developing, promoting and advertising the Vasundhra Mark brands. In addition, the plaintiff has hired several well-known Indian celebrities, including but not limited to Ms. Shweta Tewari and Ms. Prachi Desai. The most recent event where the plaintiff’s products were on display was the “FDCI X Lakme Fashion Week” in March 2022. The years followed witnesses unprecedented success, with sales rising from Rs. 19,80,812/- in the 1999–2000 fiscal year to Rs. 79,71,49,118/- for the period from 2021 to the present.
The suit:
The goods provided by the Vasundhara are similar to those provided by Vasundhra designs. The plaintiff claims that it wasn’t until April 2022 that it learned that the defendant no. 1’s contested mark/logo, “VASUNDHRA FASHION, had been published in Class 25, carrying application number 5277967 dated 08.01.2022, for products being “textile, textile items, and textiles. Despite the defendant No. 1 claiming to have been a user since 02.12.2020, the plaintiff alleges that the defendant No. 1 has not provided any documentation to substantiate this claim. The plaintiff claims that the mark used by defendant No. 1 is confusingly similar to the plaintiff’s “VASUNDHRA Marks.” The plaintiff further claims that the defendant number one is running a website with the same domain name as hers, https://vasundhra.buiness.site.
Court reffered to following judgements:
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.”
Court Observation:
To assess the balance of convenience and its impact in the current case, it will be necessary to consider the plaintiff’s registration in the numerous marks, of which “VASUNDHRA” is an essential component. The said mark is however not a registered word mark. A crucial factor to be taken into account while determining the plaintiff’s claim of exclusivity is the fact that “VASUNDHRA” is a widely used name in India. Although “VASUNDHRA” cannot be deemed to be descriptive of the plaintiff’s or defendant No. 1’s products, it must still be determined whether the plaintiff has shown a cause for an injunction to be granted.
Additionally, the defendant number 1 in this case claims to have two production facilities, four warehouses, and seven offline stores, although the plaintiff only has one store in Delhi. Additionally, its products are offered online at Meesho and Flipkart, where the plaintiff is not present. According to the learned attorney for defendant number 1, the plaintiff’s products are claimed to be designer jewellery targeted at people from higher social classes while the defendant number 1’s products are intended for people from lower social classes who are looking for less expensive clothing. In any case, Classes 24 and 25 are where the goods of Defendant No. 1 fall, and the Plaintiff has no interest in either class. For the aforesaid reasons the application was dismissed.
Conclusion:
If a mark is registered as a device then protection will be granted to the mark as the whole. Exclusive statutory right to any particular word or name contained therein apart from the mark as a whole will not be granted in case if the mark is registered as a composite device.
[1] Vasundhra Jewellers Pvt Ltd v. Kirat Vinodbhai Jadvani & Anr. I.A. 8515/2022
DUCTUS EDGE 