Vasundhra Jewellers Pvt. Ltd. Vs. Vasundhara Fashion Jewelry LLP and Ors.

Neutral Citation: 2023/DHC/4960

Decided On: 19.07.2023

Hon’ble Judge/Coram: Amit Bansal, J.

Procedural History:

The application filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for an interim injunction is being decided in this judgment.

Issue(s) Presented:

The court addresses the issue of whether an interim injunction should be granted to the plaintiff under Order XXXIX Rules 1 and 2 of CPC based on allegations of trademark infringement and passing off by the defendant.

Rule(s) of Law:

Relevant legal principles include:

  • Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Order XXXIX Rule 2
  • Trade And Merchandise Marks Act, 1958 [repealed] – Section 27, Section 27(1), Section 28, Section 28(3), Section 30(2), Section 35

Arguments of the Plaintiff:

The plaintiff, Vasundhra Jewellers Pvt. Ltd., claims to be the prior user and adopter of the trademark ‘VASUNDHRA’ for jewelry and has been using it since its establishment in 1999. The plaintiff alleges that the defendant, Vasundhara Fashion Jewelry LLP, has been using the identical mark ‘VASUNDHARA’ for similar goods. The plaintiff contends that this usage has led to confusion and infringes upon its rights. The plaintiff asserts its trademark registrations, domain name ownership, and substantial sales figures under the ‘VASUNDHRA’ mark to support its claim of distinctiveness and reputation.

Arguments of the Defendants:

The defendant, Vasundhara Fashion Jewelry LLP, argues that it has been using the mark ‘VASUNDHARA’ since 2001 and has obtained trademark registrations and copyright protection for it. The defendant claims that Ms. Vasundhara Mantri, a designated partner, started using the mark in her individual capacity before incorporating the defendant LLP. The defendant further asserts its substantial sales figures and advertising efforts to establish its genuine usage and distinctiveness of the mark. The defendant challenges the validity of the plaintiff’s documents showing prior usage.


The court dismissed the plaintiff’s application for an interim injunction.


The court, in this judgment by Amit Bansal, J., evaluates the arguments presented by both parties. The court notes the conflicting claims regarding prior usage and distinctiveness of the ‘VASUNDHRA’ mark. It refers to the defendant’s argument about the mark being a part of Ms. Vasundhara Mantri’s name and considers the applicability of Section 35 of the Trade And Merchandise Marks Act, 1958. The court also refers to a previous judgment involving similar marks and distinguishes its context from the present case. After assessing the evidence and submissions, the court concludes that the plaintiff’s application for an interim injunction lacks merit and dismisses it accordingly.

Holding and Decision:

The court’s ultimate decision in this case, as outlined in its concluding remarks, is to dismiss the application for an interim injunction filed by Vasundhra Jewellers Pvt. Ltd. against Vasundhara Fashion Jewellery LLP and others. The court held that the plaintiff failed to establish a prima facie case for the grant of an interim injunction. The court further ruled that the balance of convenience was against granting an interim injunction, primarily due to the long use of defendant no.1 (Vasundhara Fashion Jewellery LLP) since 2001. The court, in reaching this decision, analyzed various legal principles related to trademark law and passing off, as well as the specific facts of the case.

Analysis and Reasoning:

The court started its analysis by acknowledging that both the plaintiff and defendant no.1 (Vasundhara Fashion Jewellery LLP) were registered proprietors of the marks ‘VASUNDHRA’ and ‘VASUNDHARA,’ respectively, in the same Class 14 for jewelry products. Both marks were phonetically identical. The court noted that under Section 28(3) read with Section 30(2)(e) of the Trade Marks Act, an action for infringement would not be maintainable since both parties were registered proprietors of an identical mark.

However, the plaintiff filed the case for both infringement and passing off. The court then shifted its focus to the issue of passing off. It referenced the case of S. Syed Mohideen v. P. Sulochana Bai[1], emphasizing that even in cases of identical registered marks, passing off claims can be considered.

The court turned to the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd[2]., which provided the essential elements for establishing passing off. These elements include

(1) misrepresentation by a trader in the course of trade,

(2) made to prospective customers or ultimate consumers,

(3) likely to injure the business or goodwill of another trader, and

(4) causing actual damage to the business or goodwill of the party bringing the action.

The court then proceeded to examine the facts of the case under these principles to determine if the defendant had passed off its goods as those of the plaintiff. It referenced Section 35 of the Trade Marks Act, which permits a person to use their name or description of goods/services in a bona fide manner, without interfering with a registered trademark holder’s rights.

The court noted that Ms. Vasundhara Mantri (the defendant) had been using the name ‘Vasundhara’ since 2001 in connection with her jewelry business. She held 99.09% shareholding in defendant no.1 (Vasundhara Fashion Jewellery LLP), which was incorporated in 2016. The court opined that defendant no.1 was an extension of Ms. Mantri and, therefore, could claim the defense under Section 35 of the Act.

The court addressed the plaintiff’s argument that the mark ‘VASUNDHRA’ had acquired exclusiveness due to long use. It held that this claim could only be examined in a trial and could not be the basis for an interim injunction.

The court also referred to a prior case involving the plaintiff, where the Division Bench dismissed an appeal against the refusal of an injunction. The Division Bench’s observations, in that case, emphasized that ‘VASUNDHRA’ is a generic/common word and that the appellant’s high turnover did not necessarily establish a reputation.

The court considered a comparison of the plaintiff’s and defendant’s marks, highlighting that while the marks were phonetically identical, the spellings and style of writing were different. The court referred to the plaintiff’s response to a trademark examination report where it claimed that the marks were distinct and wouldn’t cause confusion.

Implications and Significance:

The court’s decision has several implications. It reaffirms the importance of establishing a strong case for passing off, even when dealing with identical marks. The court’s analysis of Section 35 of the Trade Marks Act emphasizes that a person can use their name in a bona fide manner, even when it is similar to a registered mark, as long as it doesn’t cause confusion. The decision also underscores the need for consistent arguments by parties regarding the similarity of marks in various legal contexts.

The court’s approach of considering defendant no.1 as an extension of Ms. Vasundhara Mantri, and thus eligible for the defense under Section 35 of the Act, could set a precedent for similar cases where the defendant is closely related to the individual holding the original mark.

Critique and Commentary:

The court’s reasoning appears to be thorough and well-founded. It carefully analyzed the principles of passing off and considered the plaintiff’s prior stance when responding to trademark examination. The court appropriately emphasized that just because the plaintiff had higher sales didn’t necessarily establish a stronger case for reputation.

One point that might be critiqued is the court’s reliance on Ms. Vasundhara Mantri’s shareholding in defendant no.1 to establish it as an extension of her, eligibility for the defense under Section 35. While this might be legally accurate, it could be argued that this approach might inadvertently allow for the abuse of the defense in situations where corporations are used to shield individuals from legal consequences.


In conclusion, the court’s decision to dismiss the application for an interim injunction is well-reasoned and grounded in established legal principles. The court’s analysis of passing off, the application of Section 35 of the Trade Marks Act, and the comparison of the marks all contribute to a thorough understanding of the case. The decision underscores the importance of strong evidence and consistent arguments in trademark cases, even when dealing with identical or phonetically similar marks.

[1] MANU/SC/0576/2015

[2]  MANU/SC/0199/2001

About Anil Shete 18 Articles
I am a law graduate passionate about intellectual property rights (IPR). I obtained my LL.B. degree from the esteemed Government Law College, Mumbai, and I am currently pursuing an LL.M. degree from the University of Mumbai, specializing in IP law. Additionally, I have completed a Postgraduate Diploma in Intellectual Property Rights (PGDIPR) from MNLU, Mumbai. Alongside my legal studies, I also hold an M.A. in History from the University of Mumbai, having cleared the UGC-NET in History. Furthermore, I am a registered trademark attorney and am actively pursuing my career in IP litigation at the Bombay High Court.

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