Introduction:

In the case titled Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewellery LLP, FAO(OS) (COMM) 232/2023, the Delhi High Court comprising Justice C. Hari Shankar and Justice Om Prakash Shukla was tasked with resolving an appeal that revolved around the interpretation of Section 35 of the Trade Marks Act, 1999. The litigation arose when Vasundhra Jewellers Pvt. Ltd., the appellant, sought an injunction against Vasundhara Fashion Jewellery LLP, the respondent, in respect of the use of the mark “Vasundhara” which the appellant claimed was its protected trademark. The respondent, however, asserted that the usage of the name “Vasundhara” was bona fide as it was derived from the first name of its proprietor, Ms. Vasundhara Mantri, and was therefore fully protected under Section 35 of the Trade Marks Act, 1999. Section 35 provides a statutory shield against injunctions in cases where a person is using their own name in the course of trade, provided such use is bona fide. The central question before the Court was whether the statutory protection under Section 35 is limited only to instances where the full name of an individual is used or whether it extends to instances where only the first name or a part of the name is used.

Arguments:

The appellant’s arguments centered on a restrictive interpretation of Section 35 of the Trade Marks Act, 1999. Counsel for Vasundhra Jewellers Pvt. Ltd. submitted that the benefit of Section 35 should be confined strictly to cases where the full name of the person is used as a trademark. According to the appellant, the statute did not contemplate partial use or the adoption of only the first name as a trademark for commercial purposes. They contended that allowing a trader to use merely a part of their name would open floodgates for misuse and confusion in the marketplace, especially in industries like jewellery where names have considerable goodwill and consumer association. The appellant argued that their mark “Vasundhra” had acquired significant reputation and distinctiveness in the jewellery sector and that the use of the same by the respondent would lead to deception among consumers, thereby diluting the distinctiveness of their brand. Counsel further relied on certain precedents where the courts had stressed the importance of full names in granting the statutory protection. They highlighted Goenka Institute of Education and Research v. Anjani Kumar Goenka (2009) to suggest that protection was limited and not absolute, arguing that even the Supreme Court in previous cases had observed that use of names can be restricted if they are likely to cause confusion or mislead consumers. The appellant therefore prayed for an injunction restraining the respondent from using “Vasundhara” as a trademark, submitting that unless full names were used, the protection under Section 35 would not apply and the respondent’s conduct amounted to unfair competition.

The respondent’s arguments, in contrast, were built on a broader and more liberal interpretation of Section 35. Counsel for Vasundhara Fashion Jewellery LLP contended that the statute provides protection for the use of “his own name” without qualifying or restricting it to the full name. It was argued that the law must be read in a plain and purposive manner and that there was no reason to read into the provision a restriction that Parliament itself had not placed. According to the respondent, Ms. Vasundhara Mantri was the proprietor and the business had been built around her name “Vasundhara”, which is her first name, and such usage was bona fide within the meaning of Section 35. Counsel submitted that the appellant’s interpretation would be contrary to legislative intent and would unduly restrict the right of individuals to use their names in the course of trade, which is expressly safeguarded by the statute. To reinforce their position, the respondents relied heavily on Precious Jewels v. Varun Gems (2015) where the Supreme Court had categorically held that a person cannot be restrained from using their own surname bona fide in the course of trade, thereby recognizing that both surnames and first names fall within the protective ambit of Section 35. The respondents also clarified that there was no dishonest intention in adopting the mark, no mala fide attempt to trade upon the reputation of the appellant, and that the adoption of the name “Vasundhara” was simply because it was the name of the proprietor herself. They further argued that the obiter dicta in Goenka Institute case should not be read as binding precedent, especially since no injunction was granted in that matter despite the use of only a part of the name. Therefore, they urged that the protection under Section 35 applied equally to the use of first names, surnames, or any part of a person’s name provided the usage was honest and bona fide.

Judgement:

In its judgment, the Delhi High Court rejected the appellant’s narrow construction of Section 35 and upheld the respondent’s right to use the name “Vasundhara”. Justice Hari Shankar, writing for the Bench, observed that the provision of Section 35 contains no limitation or qualification that the protection is restricted only to the use of a full name. To read such a limitation into the statute would amount to judicial legislation, which is impermissible. The Court remarked that “a name is a name” and if it happens to be the first name of an individual, it is still the person’s name and therefore entitled to protection. The Court referred to the principle that in construing statutes, especially those conferring rights, courts cannot rewrite the text by importing words that do not exist. Since Section 35 merely states “his own name” without limiting it to “full name”, any attempt to restrict its application would be contrary to legislative intent.

The Court also noted that in Precious Jewels v. Varun Gems (2015) the Supreme Court had protected the use of surnames, and by logical extension, first names would equally fall within the protective sphere. The Bench further clarified that the reliance placed by the appellant on Goenka Institute (2009) was misplaced as the observation therein was mere obiter and the actual decision had not granted injunction even when only the first name was used. The Court highlighted that the guiding principle under Section 35 is bona fide usage, and as long as the adoption of the name is honest and not intended to deceive or confuse consumers, the protection must be upheld. In the present case, there was no evidence to show that the respondent had acted dishonestly or mala fide. The name “Vasundhara” was clearly the personal name of Ms. Vasundhara Mantri, and her choice to use it in her business could not be curtailed merely because it overlapped with the appellant’s trademark. The Court also noted that interim injunctions are equitable remedies and must be granted only when there is clear evidence of dishonest adoption or deceptive similarity that is likely to mislead consumers. Since the respondent’s use was bona fide, the balance of convenience did not favour injunctive relief.

Accordingly, the Court dismissed the appeal and refused to pass any interim order against the respondent. By doing so, the High Court reaffirmed the broad and purposive interpretation of Section 35, recognizing that the statutory protection extends to all bona fide use of personal names, whether first name, surname, or otherwise. The judgment underscores the fundamental right of individuals to carry on trade in their own name and prevents overreach by established businesses attempting to monopolize common personal names. It also serves as a caution to trademark owners that registration of a mark does not automatically entitle them to restrain others from using their own names, unless dishonest intent or mala fide adoption can be clearly established. The ruling is significant in striking a balance between trademark protection and personal rights, ensuring that the law remains fair, just, and true to legislative intent.