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  • Writer's pictureAnushka Aman

India: Registration of a device mark does not grant exclusive rights to the use of its components



The Hon’ble Delhi High Court (“the Court”) in the matter of Vasundhra Jewellers Pvt. Ltd v. Kirat Vinodbhai Jadvani & Anr,[1]denied the relief of an ad-interim injunction to the Plaintiff, observing that registration of a device mark does not grant exclusive rights to the use of the components thereof. It was also highlighted by the Court that no exclusivity can be claimed over the use of the mark “VASUNDHRA” which is a common name in India.


PLAINTIFF'S SUBMISSIONS


The Plaintiff asserted that it was established on 28.10.1999 and had been using the mark “VASUNDHRA”/ “VASUNDHRA JEWELLERS” both as a trade mark as well as trade name in respect of jewellery. The Plaintiff also asserted that over the years, it has used several iterations of the mark “VASUNDHRA” and have obtained registrations for the device marks comprising the word Vasundhra. The Plaintiff also relied on registrations of several domain names comprising of the word “VASUNDHRA”. In order to assert strong goodwill and reputation, the Plaintiff relied on celebrity endorsements, participation in fashion events and exhibitions, collaboration with eminent fashion designers, unprecedented success with increasing sales figures and advertisement and promotional expenses.


The Plaintiff claimed that while the Defendant’s Trade Mark Application for the mark “VASUNDHRA FASHION” in Class 25 for goods being ‘textile, textile goods and fabrics’, claims user since 02.12.2020, there is no document on record to support such user claim of the Defendant. The Plaintiff also alleged that Defendant is operating a website bearing the domain name, www.vasundhra.business.site and Defendant’s impugned goods are also available for sale online on various e-commerce websites like Flipkart, IndiaMart, and Shopsy.


On merits, the Plaintiff contended that Defendant’s goods are allied goods and the mark is deceptively similar to the Plaintiff’s trade mark. The Plaintiff further contended that “Defendant’s plea that “VASUNDHRA” is a common name in India, cannot be accepted to denude the right of the Plaintiff in the said mark, besides 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 and, therefore, is entitled to protection as a trade mark. In any case, as the Defendant itself has applied for registration of its mark in ‘VASUNDHRA’ in Class 25, Defendant is estopped from contending that the said mark is not entitled to protection”.


DEFENDANT’S SUBMISSIONS


Per contra, the Defendant submitted that there is absolutely no chance of confusion being caused by the use of the mark “VASUNDHRA” by the Defendant as the class of goods is different from that of the Plaintiff; goods are addressed to different strata of society, with the garments of the Defendant 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.


The Defendant further submitted that 80% of the business of the Defendant is not only B2B but also confined to the State of Gujarat. It is only 20% of the business of the Defendant’s that is through e-commerce websites, that is, Flipkart and Meesho, where, in fact, the Plaintiff is not present. Further, the Defendant argued 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 has eighty persons employed at its two manufacturing units, four warehouses and seven offline stores. To supplement its arguments, the Defendant also made the following submissions:


  • Various other marks which had ‘VASUNDHRA’ as the essential feature have been registered for various classes of goods and thus, 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.


  • In a reply submitted before the Learned Registrar of Trade Marks, the Plaintiff itself claimed 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’.


  • 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 uses its device mark for goods falling in Classes 24 and 25, for which the Plaintiff has not preferred any application for registration.


Court’s Findings and Decision


The Court noted that the Plaintiff only hold registrations for device marks, and it does not hold any registration in the word mark “VASUNDHRA”. The Court took into consideration the provisions of Section 17 of the Trade Marks Act, 1999 that deals with effect of registration of parts of a mark as well as various judicial precedents wherein it is unambiguously 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 Court also observed that although the stand taken by the Plaintiff before the Registrar of Tarde Marks cannot act as an estoppel for it to claim exclusivity, however, it would still be a relevant consideration.

While deciding the claim of passing off, the Court noted the following:


· Plaintiff does not have registrations for the word mark “VASUNDHRA”, but it is also important to consider that “VASUNDHRA” form an essential part of such device mark. This exercise was important for determining the balance of convenience.


· VASUNDHRA is a common name in India is a relevant factor to decide exclusivity.


· The goods of the Plaintiff and the Defendant are not identical, however, can be said to be remotely cognate to each other.


· Even though there is phonetic similarity, visually, the two marks are different as the Plaintiff’s mark has a symbol ‘V’ along with the word “VASUNDHRA”, while the Defendant’s mark has a picture of a leaf along with word “VASUNDHRA Fashion”.


· The geographical location of the stores/ warehouses and the target customers were different for both the parties.


· The turnover of the Plaintiff may sound enormous as they are dealing in jewellery, but at the interim stage, would not be sufficient to presume that the mark has obtained goodwill so as to be associated with the Plaintiff even with respect of other goods.


Considering the above, the Court refused to grant prohibitory interim injunction to the Plaintiff and held as follows:


  • 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 though cognate, are distinct.


  • Presently, the Plaintiff has not even contended that it has plans of trade progression, that is, to expand its business to other goods including those of the Defendant.


  • The area of operation of the Plaintiff and the Defendant is also distinct; with the plaintiff being in Delhi, while the Defendant being predominantly in the State of Gujarat.


  • The Defendant also has developed suitable goodwill of the mark in its favour.


  • 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.


Consequently, the Plaintiff’s Application for temporary injunction was dismissed. However, it was made clear that any observation made in the order shall not prejudice the Plaintiff in the adjudication of the suit or trial. The same being only prima facie in nature.



[1] CS (COMM.) 363/2022.

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