The Delhi High Court on 21 September 2022 decided not to grant an ad-interim injunction in favour of a jewellery store in Delhi, stating that an exclusive right to utilize the word “Vasundhra” could not be granted because it is a common and widely used name in India.

The court stated this observation in a ruling regarding a trademark infringement and passing off suit filed by Vasundhra Jewellers which was established on 28.10.1999 and has a showroom in Pitampura. The business that owns the showroom has filed a lawsuit against a Gujarati businessman who manufactures and sells clothing under the name “Vasundhra Fashion” and has been requesting an injunction barring him from utilizing a mark that is confusingly identical to its trademark, “Vasundhra”

The plaintiff has registered its device trademarks only and hence Justice Navin Chawla pointed out that each of them is a “device mark” which means that the word “Vasundhra” is not protected by the such registrations. According to the court, Section 17 of the Trade Marks Act states that if a mark includes multiple elements, its registration must therefore confer on the owner exclusive right for the trademark that is used as a whole and not for the utilization of a portion of trademark so registered. It further stated that neither the plaintiff nor the defendant would be able to assert any exclusivity rights over the term “Vasundhra.”

The bench added that although the plaintiff’s and defendant’s items aren’t the same, they can be considered to be remotely related to each other. If compared overall, the two marks may sound the same, yet they are visually distinct because the plaintiff’s mark includes the letter “V” and the word “Vasundhra,” whereas the defendant’s mark includes an image of a leaf and the word “Vasundhra Fashion.”

Additionally, defendant number 1, in this case, claims to have two manufacturing facilities, 4 storage facilities, and 7 offline stores, whereas the plaintiff only has one store in Delhi. The court stated that its products are also available on the internet at Meesho and Flipkart, in which the plaintiff isn’t really present. The court took note of the defendant’s argument that his goods are intended for people from lower social classes who really are looking for less expensive clothing, whereas the plaintiff’s goods are said to be intended for those from higher social classes.

The court stated, “The plaintiff is engaged in the business of selling jewellery, and while its profit margin may appear to be immense, it might not, at this stage, be enough to presume that the trademark has acquired such goodwill and reputation that it can be associated only with the plaintiff and also for other goods.”

The plaintiff has not been able to establish a presumptive case for the granting of a prohibitory injunction, according to the court, even as registration and usage of the plaintiff’s mark is a device of its own.

Regarding the parties’ turnover, the court added, “Simply because the plaintiff deals in jewellery items-which by their very nature are much more expensive—resulting in a higher turnover for the plaintiff, would not give the plaintiff a better right over an otherwise widely used name in India.

Vasundhra Jewellers previously argued that it had spent a significant amount of money and time developing the brand identity and had hired Prachi Desai and Shweta Tewari, two well-known Indian celebrities as a part of their brand development.

According to the plaintiff’s application filed with the court, “the goods of the plaintiff have been frequently displayed at different fashion meetings, most recently in March 2022 in the ‘FDCI X Lakme Fashion Week’, where actress Ms Jahnvi Kapoor served as the show-stopper for fashion designer Punit Balana and decided to wear jewellery from the plaintiff.

Through his attorney, the plaintiff Kirat Vinodbhai Jadvani claimed that 80% of his business was not only B2B but also limited to the State of Gujarat. Additionally, it was argued that the plaintiff cannot assert any exclusivity rights over the name “Vasundhra,” which is widely used throughout India, specifically in the state of Gujarat.

Mark Shield was pleased to assist defendant – Kirat Vinodbhai Jadvani to present his case before the Hon’ble High court of Delhi, with the combined efforts of Advocates Mr. Anshuman Upadhyay, Mr. Naseem and Mr. Prashant.