No Injunction Can Be Granted Against Defendant Using Their Name As Trademark Even In Cases Of Passing Off: Delhi High Court

The division bench of Justices C. Hari Shankar and Om Prakash Shukla in this regard cited Section 35 of the Trade Marks Act, 1999 which proscribes any injunction being granted against the use by the defendants of her, or his, own name as a trademark, on the ground of infringement.

Appellant (original plaintiff) had contended that this provision would not operate as a defence if a case of passing off is found to be made out.

Disagreeing, the High Court held,

“Section 35 states that “nothing in this Act” i.e. nothing in the Trade Marks Act, would entitle a proprietor or a registered user of a trademark to interfere with the bona fide use by another person of his own name or of his place of business or the name or place of business of his predecessor in business. The proscription operates, therefore, as an exception to any action which can be taken, and any relief which can be obtained, under the Trade Marks Act.”

Appellant Vasundhra Jewellers Pvt. Ltd., established back in 1999, had sued Vasundhara Fashion Jewellery LLP, which statedly commenced operations in 2001, over the trademark "Vasundhara".

The Respondent contended that the mark VASUNDHARA was nothing more than the first name of Vasundhara Mantri, who started the business as a sole proprietorship. Further, that the name VASUNDHRA is a common and generic name often used in Indian families and that no party could claim any exclusivity over use of the mark VASUNDHRA.

A Single Judge of the Court had agreed that use of the mark VASUNDHARA by the respondents was not mala fide as the mark was the first name of its proprietor. Moreover, the marks were virtually dissimilar.

Aggrieved, the company approached the High Court, contending that Section 35 applies only in cases of infringement and cannot be a defence against action for passing off.

The High Court pointed out that Section 135 of the Trade Marks Act deals with the reliefs which are available thereunder and sub-section (1) thereof, in its very opening words, clarifies that it applies to suits for infringement as well as passing off.

“In other words, grant of injunction in a case where the defendant is found to have passed off his goods or services as those of the plaintiff is also a relief which is available under the Trade Marks Act. The words “nothing in this Act” in Section 35 would, therefore, cover all reliefs available under Section 135 of the Act, which includes injunction both in the case of infringement as well as passing off,” the Court said.

As such, it dismissed the appeal.

Appearance: 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, Advs. for Appellant; Mr. Shuvasish Sen Gupta, Mr. Kumar Vivek Vibhu, Mr. Pawan Maheshwari and Mr. Bhavesh Garodia Advs. for Respondents

Case title: Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewellery LLP

Case no.: FAO(OS) (COMM) 232/2023

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