Delhi High Court Upholds Honest Use Defence Under Section 35, Trade Marks Act | Use of Full Name Not Mandatory for Statutory Protection
Sanchayita Lahkar
The High Court of Delhi Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla dismissed an appeal challenging the denial of interim injunction against the respondents from using a disputed mark. The Court held that the respondents' use of the mark was bona fide and protected under Section 35 of the Trade Marks Act, 1999. The Bench recorded that the appeal against the Single Judge's decision did not warrant interference and concluded that the respondents would continue to use the mark in question during the pendency of the trial. The final order affirmed the dismissal of the appellant’s application and upheld the findings of the Single Judge, thereby dismissing the appeal in its entirety.
The matter arose out of a commercial dispute over the use of the mark “VASUNDHRA” by the appellant and “VASUNDHARA” by the respondents. The appellant instituted a suit seeking a decree of permanent injunction to restrain the respondents from manufacturing, selling, exporting, or advertising jewellery, precious stones, gems, or allied goods under the marks "VASUNDHARA" or any other deceptively similar marks. The appellant also sought to restrain the respondents from using the domain name www.vasundhara.in.
The appellant claimed to have been established on 28 October 1999 under the name Vasundhra Jewellers Private Limited and asserted continuous use of the trademarks “VASUNDHRA” and “VASUNDHRA JEWELLERS.” The appellant also submitted details of registered trademarks in Class 14 of the Nice classification, covering jewellery and allied goods, with user claims dating back to 1999. Additionally, the appellant claimed ownership of the domain www.vasundhrajewellers.com since 2011 and provided turnover figures and promotional expenses incurred over the years to demonstrate goodwill.
The appellant contended that it first became aware of the respondents’ use of the mark “VASUNDHARA” in June 2019, when the respondents’ mark appeared in a First Examination Report issued by the Trade Marks Registry. In January 2022, the appellant discovered that the respondents were also operating a website under the domain www.vasundhara.in and using the disputed mark on social media platforms. A cease-and-desist notice was issued by the appellant on 24 February 2022, to which the respondents replied on 3 March 2022, denying discontinuation of use. Consequently, the appellant filed CS (COMM) 161/2022 before the Delhi High Court along with an application under Order XXXIX Rules 1 and 2 of the CPC, seeking an interim injunction.
The respondents, in their written statement, contended that the mark “VASUNDHARA” was adopted from the name of Vasundhara Mantri, who began her proprietorship business in 2001. They argued that the mark was registered in her name in Class 14 with effect from 17 June 2003, and that copyright registration of the “VASUNDHARA” logo was obtained in 2005. The respondents further noted that the website www.vasundhara.in had been launched in 2007. The respondents placed reliance on the fact that Vasundhara Creative Jewellery Pvt. Ltd. was incorporated in 2014, later renamed Vasundhara Fashion Jewellery Pvt. Ltd., and subsequently converted to Vasundhara Fashion Jewellery LLP (Respondent No. 1) in 2016. A takeover agreement in 2018 and an assignment deed in 2019 transferred the intellectual property rights from Vasundhara Mantri to the respondent LLP.
The respondents also disputed the appellant’s claim of user since 1999, alleging lack of credible evidence and pointing to anomalies in the invoices produced by the appellant. They referred to the appellant’s 2019 statement before the Trade Marks Registry, where it was contended that “VASUNDHRA” and “VASUNDHARA” were not deceptively similar. The respondents argued that this amounted to estoppel and barred the appellant from claiming otherwise in the suit.
The Single Judge, in the impugned judgment dated 19 July 2023, dismissed the application for interim injunction. The Court observed that the respondents had been bona fide using the name “VASUNDHARA” since 2001 and that the use was protected under Section 35 of the Trade Marks Act. The Single Judge also noted inconsistencies in the appellant’s invoices and stated that goodwill sufficient to establish a claim of passing off had not been demonstrated prior to the respondents’ adoption of the mark.
Aggrieved by the dismissal, the appellant filed the present appeal before the Division Bench. The appellant argued that Section 35 applied only to natural persons and not to corporate entities and that it was limited to use of the full name. They further contended that statements made during prosecution of abandoned trademark applications could not create estoppel. The respondents reiterated their defence and supported the findings of the Single Judge.
The Division Bench extensively examined the rival contentions. On the applicability of Section 35, the Court stated: “No injunction can be granted even in the case of passing off against a defendant, restraining the use by her, or him, of her, or his, own name.” The Bench clarified that the words “nothing in this Act” in Section 35 extended to both infringement and passing off actions, as both fall within Section 135 of the Act.
On the question of whether Section 35 applied to corporate entities, the Court observed: “We are not required to enter into the merits of this contention, for the simple reason that the word VASUNDHARA in the present case was coined and adopted by Vasundhara Mantri, who was an individual… Respondent 1, therefore, succeeded to the intellectual property rights of Vasundhara Mantri in the mark VASUNDHARA. Inasmuch as those rights were availed by an individual, the benefit of Section 35 would also be available to Respondent 1.”
Regarding the use of the full name, the Court recorded: “In the absence of any particular stipulation, in Section 35, to the effect that it applies only where the full name is used, we are unwilling to read any such limitation into the provision. A name is a name. It cannot be denied that VASUNDHARA was the name of Vasundhara Mantri.” The Court therefore rejected the appellant’s submission that the protection under Section 35 required the use of the full name.
The Bench affirmed the Single Judge’s finding that the respondents’ use of the mark was bona fide: “VASUNDHARA was used by Vasundhara Mantri. It was her own name. There is nothing whatsoever on record on the basis of which her bona fides could be questioned.”
The Court then turned to the issue of passing off and observed that the appellant had to demonstrate goodwill in the mark “VASUNDHRA” prior to 2001. It noted: “The appellant commenced business in India only in 1999. A perusal of the sales figures reveals that, in 1999-2000, the appellant’s sales were of ₹19,80,812/- and in 2000-2001, rose to ₹2,81,80,175/-. Of these, the figures of ₹19,80,812/- can hardly be treated as demonstrative of goodwill.” The Court held that one year of sales before the respondents’ use in 2001 did not demonstrate sufficient goodwill.
The Division Bench further agreed with the Single Judge’s doubts regarding the genuineness of the appellant’s invoices and stated that whether the appellant was a prior user would be a matter of trial. On the issue of estoppel, the Court recorded: “The respondents’ mark is either deceptively similar to the appellant’s, or it is not. It cannot be that the mark is not deceptively similar before the Trade Marks Registry, but becomes deceptively similar before this Court.” The Court therefore held that the appellant was estopped from taking contradictory positions.
Finally, the Court addressed the balance of convenience and irreparable loss, observing: “The respondents had been using the mark VASUNDHARA at least for 17 years, even as per the appellant’s own stand, before the appellant instituted the suit… It is difficult for us to hold that, if the appellant could tolerate the use of the mark for 17 years, a case of irreparable loss could be said to have been made out.”
The Division Bench concluded by affirming the impugned judgment in its entirety. It recorded: “We, therefore, are of the opinion that, irrespective of the merits of the matter, there could have been no injunction restraining the respondents from using the mark VASUNDHARA in view of the protection available under Section 35 of the Trade Marks Act.” The Court further stated: “For all these reasons, we find no ground to interfere with the impugned judgment of the learned Single Judge, which is affirmed in its entirety. The appeal is accordingly dismissed.”
Advocates Representing the Parties:
For the Petitioners: Mr. Sagar Chandra, Mr. Prateek Kumar, Ms. Aarushi Jain, Mr. Yojit Pareek, Ms. Shubhie Wahi, Ms. Sanya Kapoor, Ms. Ankita, Mr. Prassant Kr. Sharma and Mr. Chetan Charitra, Advocates
For the Respondents: Mr. Shuvasish Sen Gupta, Mr. Kumar Vivek Vibhu, Mr. Pawan Maheshwari and Mr. Bhavesh Garodia, Advocates
Case Title: Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewellery LLP & Anr.
Neutral Citation: 2025: DHC:7193-DB
Case Number: FAO(OS) (COMM) 232/2023 & CM APPL. 55117/2023
Bench: Justice C. Hari Shankar, Justice Om Prakash Shukla
