2022 (11) TMI 213 - HC - Indian Laws

Seeking permanent injunction against respondent no. 1 from infringement, passing off, its relevant trademarks - exclusive right to use a trademark - case set up by the appellant is that it is the prior and registered proprietor of the VASUNDHRA Trademarks, registered for goods falling under Class 14 and thus, the impugned marks used by respondent no.1, dealing in allied goods, is deceptively similar to its marks - HELD THAT - The VASUNDHRA Trademarks are device marks and the registration of the said trademarks does not automatically grant the appellant exclusive right in respect of the word Vasundhra . It is well settled that a composite trademark or label trademark is not required to be dissected to determine whether there is any deceptive similarity with another trademark. The question whether there is any deceptive similarity between two trademarks has to be ascertained by examining the marks in question as a whole. In M/S. SOUTH INDIA BEVERAGES PVT. LTD. VERSUS GENERAL MILLS MARKETING INC. ANR. 2014 (10) TMI 1060 - DELHI HIGH COURT , the Division Bench of this Court had explained the anti-dissection rule in some detail. The Court reiterated that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their components parts for comparison . However, the Court had also observed that while a mark is to be considered in entirety, yet it is impermissible to accord more or less importance or dominance to a particular portion or element of a mark in cases of composite marks . In the facts of the present case, the learned Single Judge had found that the appellant held registration of the device marks/composite marks that contain the word Vasundhra but it did not have any registration of the word mark VASUNDHRA . It is material to note that the appellant had applied for registration of the word mark but the same has not been granted to it as yet. The Court had, thus, found that the appellant did not have an exclusive right to use the word Vasundhra except as part of its device trademarks. This Court finds no infirmity with the said view. This Court concurs with the view that a proprietor of a trademark cannot expand the area or protection granted to the mark. Indisputably, the appellant does not enjoy the monopoly for use of the word Vasundhra - this Court is unable to accept that the appellant can now, by indirect means, secure the benefit of the registration for the word mark VASUNDHRA after having secured the registration of its mark by claiming that it was not similar to other cited marks, which contain the word Vasundhra . This Court does not find any ground to interfere with the impugned judgment - Appeal dismissed.

Summary

Issues Involved:
1. Infringement and passing off of trademarks.
2. Exclusive right to use the word "Vasundhra".
3. Deceptive similarity between trademarks.
4. Protection of composite trademarks.

Issue-wise Detailed Analysis:

1. Infringement and Passing Off of Trademarks:
The appellant, Vasundhra Jewellers Private Limited, sought an interim order to restrain respondent no. 1 from using the trademark "VASUNDHRA FASHION" in connection with its textile business, claiming that it infringes on the appellant's trademarks and amounts to passing off. The appellant's application was dismissed by the learned Single Judge, leading to the present appeal.

2. Exclusive Right to Use the Word "Vasundhra":
The appellant claimed exclusive rights to the use of the word "Vasundhra" based on their registered device marks under Class 14. The learned Single Judge found that the appellant did not hold any registration for the word mark "VASUNDHRA". The court noted that while the device mark's essential feature is entitled to protection, it does not grant exclusivity to the word "Vasundhra" alone. The court emphasized that "VASUNDHRA" is a common name in India, and an exclusive right to its use cannot be granted to the appellant solely based on the device marks.

3. Deceptive Similarity Between Trademarks:
The appellant argued that the word "Vasundhra" is an essential feature of its trademark and that respondent no. 1's use of "VASUNDHRA FASHION" for allied goods would amount to infringement. The learned Single Judge referred to the Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., which outlined factors for determining deceptive similarity, including the nature of the marks, degree of resemblance, nature of goods, class of purchasers, and mode of purchasing. The court found that the appellant did not make a prima facie case for prohibitory injunction, noting that the goods of the appellant and respondent no. 1, though cognate, are distinct, and their areas of operation are different.

4. Protection of Composite Trademarks:
The court emphasized that a composite trademark or label trademark should not be dissected to determine deceptive similarity. The appellant's trademarks were device marks that included the word "Vasundhra", but the appellant did not have a standalone registration for the word mark. The court found that the appellant could not claim an exclusive right to the word "Vasundhra" merely based on the registration of composite marks. The court also noted that the appellant had previously distinguished its marks from others containing the word "Vasundhra" before the Registrar of Trademarks by claiming that its marks should be considered as a whole.

Conclusion:
The court concluded that the appellant did not have an exclusive right to the word "Vasundhra" and that the competing marks, when viewed as a whole, were not deceptively similar. The appeal was dismissed, and the court found no grounds to interfere with the impugned judgment. The appellant's attempt to secure the benefit of the word mark "VASUNDHRA" through indirect means was rejected, and the court upheld the learned Single Judge's decision. The appeal and any pending applications were dismissed accordingly.