This case pertains to a trademark dispute between Diamond Modular Pvt. Ltd. (the petitioner) and Yash Arora, trading as Siddhi Vinayak Traders (respondent no. 1). The petitioner sought the cancellation of the respondent's trademark "GREEN DIAMOND" under Section 57/125 of the Trademarks Act, 1999, alleging infringement, passing off, and dishonest adoption.

• Background: The petitioner, a prominent manufacturer of electrical goods since 1975, has been using the trademark "DIAMOND" extensively, building substantial goodwill and reputation in the market. The respondent, an ex-distributor of the petitioner, registered the trademark "GREEN DIAMOND" in 2019 for similar goods. The petitioner alleged that this registration was dishonest and intended to capitalize on its established goodwill.
   
• Brief Facts of the Case:
  • The petitioner's trademark "DIAMOND" has been in use since 1975 and is associated with electrical goods, including LED lights and switches.
  • The respondent registered the trademark "GREEN DIAMOND" in 2019 under Class 9 for electrical accessories.
  • The petitioner discovered the respondent's registration in 2021 and filed for rectification, alleging trademark infringement and passing off.
  • The petitioner had previously obtained an injunction against the respondent from using "GREEN DIAMOND" in a separate District Court proceeding.
     
• Issues Involved:
  • Whether the respondent's trademark "GREEN DIAMOND" infringes upon the petitioner's trademark "DIAMOND."
  • Whether the respondent's registration was dishonest and intended to create confusion in the market.
  • Whether the petitioner is entitled to cancellation of the respondent's trademark.
     
• Submission of Parties:
  • Petitioner:
    • Claimed prior and extensive use of the trademark "DIAMOND."
    • Alleged that the respondent, as an ex-distributor, was fully aware of the petitioner's trademark and dishonestly adopted "GREEN DIAMOND."
    • Highlighted the likelihood of confusion among consumers due to the similarity of the marks.
       
  • Respondent:
    • Argued that "DIAMOND" is a generic term and cannot be monopolized.
    • Claimed that "GREEN DIAMOND" is a device mark, distinct from the petitioner's word mark.
    • Asserted that the registration followed due process and was valid.
       
• Reasoning and Analysis by the Judge:
  • Prior Use and Goodwill: The court recognized the petitioner's prior and continuous use of "DIAMOND" since 1975, establishing its goodwill and reputation.
  • Dishonest Adoption: The respondent's status as an ex-distributor of the petitioner strongly indicated knowledge of the petitioner's trademark. The adoption of "GREEN DIAMOND" was deemed dishonest and aimed at capitalizing on the petitioner's goodwill.
  • Likelihood of Confusion: The similarity in the dominant part of the marks ("DIAMOND") and the identical nature of goods heightened the risk of consumer confusion.
  • Genericity Argument: The court rejected the respondent's claim that "DIAMOND" is generic, holding that long-term use and goodwill had given the mark distinctiveness and secondary meaning.
     
• Decision: The court allowed the rectification petition and directed the cancellation of the respondent's trademark "GREEN DIAMOND" under No. 4290006 in Class 9. The respondent was restrained from using the mark "GREEN DIAMOND" for goods under Classes 9 and 11. Additionally, the respondent was ordered to file a statement of accounts detailing profits earned from using the impugned trademark.

Conclusion:
This judgment reaffirms the principle that dishonest adoption of a trademark, especially by an ex-associate, is actionable under trademark law. It underscores the importance of protecting established trademarks from misuse and maintaining the integrity of the trademark registry.

Case Title: Diamond Modular Pvt. Ltd. Vs. Yash Arora 
Date of Order:January 8, 2025
Case No.C.O. (COMM.IPD-TM) 225/2021
Neutral Citation: 2025:DHC:37
Name of Court:High Court of Delhi at New Delhi
Name of Judge:Hon'ble Ms. Justice Mini Pushkarna

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539