Introduction:
In the case of Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewellery LLP (FAO(OS)(COMM) 232/2023), the Delhi High Court, through a division bench comprising Justices C. Hari Shankar and Om Prakash Shukla, delivered a landmark ruling reiterating the principle enshrined under Section 35 of the Trade Marks Act, 1999, that no injunction can be granted restraining a person from using their own name in business, even if the plaintiff asserts trademark infringement or passing off. The case arose when Vasundhra Jewellers Pvt. Ltd., a company established in 1999 and engaged in the jewellery business, initiated legal proceedings against Vasundhara Fashion Jewellery LLP, which had commenced operations in 2001, alleging violation of its rights over the mark “VASUNDHRA.” The plaintiff argued that the defendant’s adoption of the word “VASUNDHARA” in its trade name amounted to passing off, as it created confusion in the minds of customers and rode on the goodwill established by the plaintiff. The grievance was that Section 35 of the Act, which protects the bona fide use of one’s own name, could not serve as a defence in cases of passing off but only in cases of direct trademark infringement. The plaintiff contended that the defendant was misappropriating the goodwill associated with the name “VASUNDHRA,” which the plaintiff had carefully cultivated over decades of operations, and that the protection afforded under the statute was not absolute when deception and misrepresentation were evident.
Arguments:
The arguments advanced on behalf of the appellant-plaintiff Vasundhra Jewellers Pvt. Ltd. were premised on three core submissions. First, it was argued that Section 35 of the Trade Marks Act specifically provides immunity from injunction in cases of infringement where the defendant is using their own name, but this statutory defense cannot be extended to passing off, which is a common law remedy independent of statutory rights. Counsel submitted that the protection of one’s own name cannot be stretched to allow deception, as passing off is concerned with the broader issue of protecting goodwill and preventing misrepresentation in trade. Second, it was emphasized that the appellant had established its business under the mark “VASUNDHRA” as early as 1999, much before the respondent entered the field, and over the years, had built considerable goodwill, reputation, and consumer recognition. This prior use, according to the appellant, entitled it to exclusive association with the mark in the jewellery industry. Third, the appellant argued that allowing the respondents to continue using “VASUNDHARA” would cause irreparable harm to its brand identity and create confusion among consumers who might assume an affiliation or connection between the two businesses. Counsel relied on precedents that recognized the principle that no person can trade upon another’s established goodwill under the guise of using their own name, particularly where mala fides could be inferred.
On the contrary, the respondents Vasundhara Fashion Jewellery LLP strongly resisted the claim and urged dismissal of the appeal. Their primary defense rested on the plain reading of Section 35 of the Trade Marks Act, which explicitly states that nothing in the Act shall entitle a proprietor of a registered trademark to interfere with the bona fide use by a person of his or her own name, or the name of their predecessor in business. The respondents contended that the mark “VASUNDHARA” was nothing more than the first name of its proprietor, Ms. Vasundhara Mantri, who had originally commenced the business as a sole proprietorship before it was reconstituted. This, they argued, was a textbook case of bona fide use of one’s own name, which enjoys absolute statutory protection against injunctions. The respondents further argued that the term “Vasundhara” is a common and generic name in Indian society, frequently used as a first name across families, and thus incapable of exclusive appropriation by any one trader. They emphasized that trademark law does not allow monopoly over common personal names unless extraordinary circumstances of distinctiveness and secondary meaning are proven, which the appellant had failed to establish. Furthermore, the respondents contended that the marks in question were visually and conceptually dissimilar when considered in entirety, as “Vasundhra Jewellers Pvt. Ltd.” and “Vasundhara Fashion Jewellery LLP” catered to different segments, used different logos, and had distinct trade dress. They denied any mala fide intent and asserted that their business had grown organically on the strength of their proprietor’s personal reputation and entrepreneurial efforts.
When the matter first came before a Single Judge of the Delhi High Court, the Court held that the respondents’ use of the mark “VASUNDHARA” was not mala fide, since it represented the first name of its proprietor. The Court also noted that the marks were not deceptively similar when compared holistically and that the appellant had failed to establish a likelihood of confusion significant enough to warrant injunctive relief. Dissatisfied with this outcome, the appellant escalated the matter to the division bench, pressing its contention that the Single Judge had misapplied Section 35 by extending it to passing off actions, which, according to the appellant, lie outside the statutory ambit of the Act.
Judgement:
The division bench of the Delhi High Court, however, comprehensively rejected the appellant’s submissions. The Court’s reasoning turned on a careful interpretation of Section 35 and Section 135 of the Trade Marks Act. The bench noted that Section 35 provides a clear exception by stipulating that “nothing in this Act shall entitle the proprietor or a registered user of a trade mark to interfere with the bona fide use by a person of his own name.” The phrase “nothing in this Act,” the Court emphasized, operates broadly and encompasses all types of reliefs that could otherwise be claimed under the Act. In this context, the Court relied on Section 135, which sets out the reliefs available in infringement and passing off suits, including injunctions. The bench pointed out that Section 135(1) expressly states that the reliefs therein apply to suits for infringement as well as passing off. Consequently, the protection afforded by Section 35 cannot be confined narrowly to infringement actions alone but must extend equally to passing off cases, since injunction is one of the reliefs envisaged under Section 135.
The Court also rejected the appellant’s attempt to carve out an exception on the ground of alleged misrepresentation. It noted that there was no evidence to suggest that the respondent’s use of “VASUNDHARA” was dishonest or intended to mislead customers. On the contrary, the adoption of the mark was bona fide, being the personal name of the proprietor, and the business had operated transparently in that capacity since 2001. The bench underscored that the legislative intent behind Section 35 was precisely to prevent individuals from being restrained from carrying on business in their own names, provided the use is bona fide. The argument that “VASUNDHARA” was established as a brand exclusively associated with the appellant was also dismissed, as the Court observed that the name is a common Indian first name, incapable of complete monopolization. The prior user argument advanced by the appellant was acknowledged but held insufficient to override the statutory safeguard of Section 35, especially in the absence of compelling evidence of confusion or bad faith.
Ultimately, the High Court dismissed the appeal and upheld the decision of the Single Judge, reinforcing that Section 35 creates a broad statutory exception which applies not only to infringement claims but also to passing off actions, thereby shielding the bona fide use of personal names from injunction. The ruling clarified the scope of the statutory framework, harmonizing Sections 35 and 135, and set a significant precedent affirming that the right to use one’s own name in trade, if genuine and bona fide, cannot be curtailed even in the face of claims of passing off. The decision also reaffirmed the balance struck by the legislature between protecting trademark rights and safeguarding the fundamental right of individuals to use their own identity in business.