Delhi High Court Cancels Trademark "GREEN DIAMOND," Holds It Deceptively Similar to "DIAMOND" and Adopted with Dishonest Intent to Exploit Established Goodwill: "Trademark Law Protects Long-Standing Reputation from Misuse"
Delhi High Court Cancels Trademark "GREEN DIAMOND," Holds It Deceptively Similar to "DIAMOND" and Adopted with Dishonest Intent to Exploit Established Goodwill: "Trademark Law Protects Long-Standing Reputation from Misuse"

Delhi High Court Cancels Trademark “GREEN DIAMOND,” Holds It Deceptively Similar to “DIAMOND” and Adopted with Dishonest Intent to Exploit Established Goodwill: “Trademark Law Protects Long-Standing Reputation from Misuse”

Share this article

1. Court’s Decision:

The Delhi High Court allowed the rectification petition filed by the petitioner and canceled the registration of the respondent’s trademark “GREEN DIAMOND” (Device), registered under Class 9 of the Trade Marks Act, 1999. The Court also directed the Registrar of Trade Marks to issue a notification canceling the trademark. The decision emphasized that the respondent’s trademark was deceptively similar to the petitioner’s and adopted with dishonest intent to benefit from the petitioner’s goodwill.


2. Court’s Decision:

The Delhi High Court ruled in favor of the petitioner, canceling the registration of the trademark “GREEN DIAMOND.” The Court observed that:

  1. The respondent’s trademark was deceptively similar to the petitioner’s trademark.
  2. The respondent adopted the mark with dishonest intent, knowing the petitioner’s goodwill in the market.

The Registrar of Trade Marks was directed to issue a formal notification canceling the registration.


3. Facts:

  1. Petitioner’s Business:
    The petitioner has been in the electrical goods business since 1975 under the trademark “DIAMOND.” Over decades, the mark gained a reputation as a trusted brand, becoming synonymous with high-quality electrical goods, such as LED lights, switches, and accessories.
  2. Respondent’s Actions:
    • The respondent, who had been the petitioner’s distributor for over a decade, registered the trademark “GREEN DIAMOND” in 2019.
    • The petitioner discovered this registration in 2021 and filed a rectification petition, arguing that the respondent’s trademark infringed on its own.
  3. Petitioner’s Concerns:
    • The petitioner alleged that the respondent’s mark was designed to create confusion and mislead consumers into believing that their goods were associated with the petitioner’s brand.

4. Issues:

The Court addressed two primary questions:

  1. Was “GREEN DIAMOND” deceptively similar to the petitioner’s “DIAMOND” trademark?
  2. Did the respondent dishonestly adopt the mark with the intent to ride on the petitioner’s goodwill?

5. Petitioner’s Arguments:

  1. Prior Use and Goodwill:
    • The petitioner provided evidence of uninterrupted use of the “DIAMOND” trademark since 1975, with substantial sales figures and consumer recognition.
  2. Deceptive Similarity:
    • The respondent’s trademark was phonetically, visually, and structurally similar to the petitioner’s trademark. This could lead to consumer confusion.
  3. Malafide Intent:
    • The respondent, being a former distributor, was well aware of the petitioner’s reputation and sought to benefit from it by registering “GREEN DIAMOND.”
  4. Violation of Law:
    • The petitioner argued that the respondent’s trademark violated Sections 11 and 57 of the Trade Marks Act, 1999, by causing confusion and misleading the public.

6. Respondent’s Arguments:

  1. Generic Nature of “DIAMOND”:
    • The respondent argued that “DIAMOND” is a common, generic term, and the petitioner could not claim exclusive rights over it.
  2. Distinctiveness of “GREEN DIAMOND”:
    • The respondent contended that “GREEN DIAMOND” was a device mark with unique elements, distinguishing it from the petitioner’s wordmark.
  3. Lawful Registration:
    • The respondent emphasized that its trademark was registered through due process and thus should not be canceled.

7. Court’s Legal Analysis:

  1. Trademark Distinctiveness:
    • The Court observed that long-standing use of a trademark creates distinctiveness and secondary meaning, making it synonymous with the proprietor’s goods.
    • The petitioner’s use of “DIAMOND” since 1975 gave it this distinctiveness.
  2. Deceptive Similarity:
    • The Court applied the “Triple Identity Test,” assessing the similarity in trademarks, the nature of goods, and the target consumers.
    • It found that “GREEN DIAMOND” shared substantial similarities with “DIAMOND,” and both targeted the same consumer base. This was likely to cause confusion.
  3. Dishonest Adoption:
    • The Court noted that the respondent’s prior relationship as the petitioner’s distributor showed that the respondent was aware of the petitioner’s trademark.
    • The adoption of “GREEN DIAMOND” shortly after the business relationship ended indicated a dishonest intention to exploit the petitioner’s goodwill.
  4. Generic Word Defense:
    • The Court rejected the respondent’s argument that “DIAMOND” was generic. It held that even common words can acquire distinctiveness when used extensively over time, as demonstrated by the petitioner.
  5. Precedents Cited:
    • The Court referred to several judgments, such as:
      • Mahendra & Mahendra Paper Mills v. Mahindra & Mahindra Ltd.: Long-term use of a name gives it distinctiveness and secondary meaning, warranting protection.
      • Dr. Reddy’s Laboratories v. Reddy Pharmaceuticals: Even surnames or common words can be protected when associated with a brand’s goodwill.

8. Court’s Reasoning:

  1. Likelihood of Confusion:
    • The average consumer, relying on imperfect recollection, would likely associate “GREEN DIAMOND” with “DIAMOND,” leading to confusion.
  2. Fraudulent Conduct:
    • The respondent’s trademark application was made in bad faith, as evidenced by its timing and prior knowledge of the petitioner’s brand.
  3. Protection of Goodwill:
    • The Court emphasized the need to protect the petitioner’s trademark, which had become a symbol of quality over decades of use.

9. Conclusion:

The Court ruled in favor of the petitioner, holding that:

  1. The respondent’s trademark “GREEN DIAMOND” was deceptively similar to the petitioner’s trademark.
  2. The respondent’s adoption of the mark was dishonest and intended to mislead consumers.
  3. The trademark “GREEN DIAMOND” was canceled, and the Registrar of Trade Marks was directed to notify the cancellation.

10. Implications:

This judgment sets a strong precedent for:

  1. Trademark Protection: Long-standing use of a trademark, even if it involves common words, is entitled to legal protection.
  2. Deterrence of Dishonest Practices: The judgment discourages businesses from adopting deceptively similar trademarks to exploit a competitor’s goodwill.
  3. Consumer Protection: By addressing deceptive similarity, the Court ensures that consumers are not misled about the source of goods or services.

Also Read – Supreme Court Sets Aside Jharkhand High Court Order on Prisoner Transfer: “Safety and Security of Prisoners is Paramount”; Upholds Administrative Powers Under Prisoners Act and Calls for Modern Jail Reforms

1 Comment

Leave a Reply

Your email address will not be published. Required fields are marked *