DIAMOND MODULAR PVT. LTD. Vs YASH ARORA & ANR
4A IP SOLUTION ADVOCATES AND IP ATTORNEYS
The Right Lawyer
CASE NO:
CS (Comm.) No. 125/21
FACTS:
Plaintiff/Diamond Modular Private Limited engaged in the business of electrical goods and accessories and adopted the trademark “DIAMOND”. Defendant/Yash Arora trading as Siddhi Vinayak Traders engaged in the business of electrical goods and accessories and adopted the trademark “GREEN DIAMOND”. Defendant itself was one of the dealers of plaintiff’s product. Hence, plaintiff filed suit against defendant and sought for permanent injunction to restrain, passing off, infringement of Trademark, Rendition of accounts, delivery up etc.
JUDGMENT:
Under law proprietorship firm has no legal existence, therefore, judgment shall be pronounced against defendant no.1 only, who is proprietor of defendant no.2.
On pleadings of parties, Court framed the following issues:
2. Whether defendants are passing off the copyright of the artistic work of the plaintiff brand “DIAMOND”?
3. Whether the plaintiff has not come to the court with clean hands and whether facts of not disclosing other proceedings going on between the parties in other forums?
4.?Whether plaintiff is entitled to relief of permanent injunction?
5. Whether the plaintiff is entitled to relief of rendition of accounts?
6.?Whether the plaintiff is entitled to costs?
7. Relief
With regard to issues no’s 1, 2 and 4:
A defendant is a registered owner of the trademark ‘Green Diamond’ under category 9 and applied for registration under category 11. The plaintiff filed cancellation in respect of registration under category 11 and rectification in respect of registration under category 9. In view of settled law injunction cannot be granted for infringement against a registered trademark, however, proceedings for injunction for passing off can lie even against a registered trademark. Accordingly, the suit shall be considered for the action of passing off against the defendant.
It is settled law that if the witness is not cross-examined on any point specifically pleaded and stated on oath, that fact shall be deemed to have been accepted. In view of the non-cross-examination of the plaintiff in respect of registration certificates, transfer of the Trademark to the plaintiff’s name and sales figure as pleaded in the plaint and tendered in evidence, the defendant has failed to challenge the goodwill and reputation of the mark ‘DIAMOND’ pleaded by the plaintiff.
The court held that even if a trademark was adopted by the defendant innocently very fact that confusion can arise regarding it being sourced from the plaintiff would be a reason good enough to grant an injunction to such plaintiff as it would be a case of passing off. The plaintiff is alleging malafide, however, even if the stand of the defendant that the adoption was bonafide is considered as correct, the chances that the general public might relate products of the defendant with the plaintiff on account of their past relation are very high.
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There is not much evidence on the aspect of infringement of copyright in artistic work of plaintiff, plaintiff, however able to prove issue of passing off of goods by the defendant under trademark ‘GREEN DIAMOND’. Since the plaintiff and defendant are in trade of identical products and defendant was a dealer of the plaintiff’s goods, and as such was fully aware of the plaintiff’s prior use of a trademark and sale of products under trade name ‘DIAMOND’. Adoption of similar trademark by defendant after making some addition and some alternations in get-up, etc. makes impugned trademark ‘GREEN DIAMOND” a fraudulent and dishonest adoption. Plaintiff was able to establish that the defendant, with dishonest intention, started using the trademark ‘GREEN DIAMOND’ which is deceptively similar to plaintiff trade-mark ‘DIAMOND’. The plaintiff is entitled for an injunction against the defendant in respect of trade-mark ‘GREEN DIAMOND’ using which the defendant has attempted to pass off its goods as that of the plaintiff. A decree of injunction is passed in favor of the plaintiff and restraining the defendant from passing off its goods under the trademark ‘GREEN DIAMOND’.
With regard to issue no: 3:
Non-mentioning of the fact that there were cases pending between parties unrelated to the dispute of trademark at the time of filing of a suit, which cases have not been shown to be related to “challenge of trade-mark” in this case in any manner, does not affect the merits of case. The issue is, therefore, decided against the defendant and in favour of the plaintiff.
With regard to issue no: 5
It is the defendant's own case that it was using trade mark ‘GREEN DIAMOND’. defendant also filed several invoices in support of its claim of having sold goods using said trademark. He has also given sales figures for year 2020 & 2021 in support of his claim. These documents are not sufficient to conclude amount of profit earned by defendant.
Therefore, the plaintiff is entitled to a decree of rendition of the account in respect of profits earned by defendant from 2020, when the defendant says in cross-examination it started using a trade-mark ‘till the date of grant of an injunction by court, i.e 20.03.2021. A preliminary decree is passed in favor of the plaintiff.
With regard to issue no: 6 & 7
Court found that the plaintiff is entitled to total costs of Rs.46, 500/-. The defendant is restrained from using the trademark ‘GREEN DIAMOND’ in respect of any goods falling under categories 9 & 11. Suit is allowed.
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Patent Analyst @ Indian Institute Of Patent and Trademark | Biotechnology, MBA
5 个月Very informative