The present case revolves around a trademark dispute concerning the use of the mark “Green Diamond” by the respondent, Yash Arora, who operates under the name Siddhi Vinayak Traders. The petitioner, Diamond Modular Pvt. Ltd., sought rectification of the trademark register, requesting the removal of the “Green Diamond” trademark (Device) registered under No. 4290006 in Class 9 in favour of the respondent. The primary argument was that the respondent’s mark was deceptively similar to the petitioner’s well-established “Diamond” mark, thereby infringing upon its rights and misleading consumers in the market.
The petitioner, through its predecessors, has been engaged in the business of manufacturing and marketing electrical goods, LED lights, switches, and electrical accessories since 1975. Over the decades, the petitioner has developed strong brand recognition and goodwill in the industry. The trademark “Diamond” has been consistently used, with significant investments made in advertising and promotional activities to establish its identity in the market. The petitioner also operates an official website, www.diamondindia.co.in, further reinforcing its presence under the “Diamond” brand.
The petitioner argued that the respondent’s adoption of “Green Diamond” was neither honest nor bona fide. It was contended that the respondent had deliberately used the “Diamond” name, which had already acquired distinctiveness and secondary meaning, to mislead consumers. The respondent was previously a distributor of the petitioner’s products, which, according to the petitioner, demonstrated prior knowledge of the established brand, further suggesting that the adoption of the “Green Diamond” mark was dishonest and intended to cause confusion in the market.
The dispute came to light when the petitioner discovered the respondent’s registration of “Green Diamond” in early 2021 while reviewing the Trade Marks Registry records. The petitioner promptly filed a rectification petition, arguing that the registration of “Green Diamond” was contrary to Sections 9, 11, and 18 of the Trade Marks Act, 1999, as it lacked distinctiveness and was likely to deceive or confuse consumers.
In defence, the respondent argued that the mark “Diamond” is a common and generic term which cannot be monopolised by a single entity. Furthermore, the respondent contended that its trademark “Green Diamond” was visually distinct as it included a device element that differentiated it from the petitioner’s mark. The respondent also claimed that it had legitimately applied for and obtained the registration through due process, making the petitioner’s challenge invalid.
The court examined the evidence, including the petitioner’s trademark registration certificates, historical sales data, and promotional materials, which demonstrated continuous and extensive use of the “Diamond” trademark since 1975. The court also considered the fact that the respondent had been a distributor of the petitioner’s products for over a decade, reinforcing the petitioner’s claim that the respondent was fully aware of the goodwill associated with the “Diamond” brand before adopting “Green Diamond”.
The court observed that the fundamental principle in trademark law is to prevent consumer confusion and protect the goodwill of established brands. While it acknowledged that “Diamond” as a word may have a common meaning, it emphasised that long-term usage and public recognition could confer distinctiveness and exclusivity to a trademark. The court cited Supreme Court precedents, including Mahindra & Mahindra Ltd. vs Mahindra & Mahindra Paper Mills Ltd. and Dr. Reddy’s Laboratories Ltd. vs Reddy Pharmaceuticals Ltd., which held that even common words could acquire secondary meaning and distinctiveness if used consistently and widely.
The court found that the respondent’s adoption of “Green Diamond” was not coincidental but rather an attempt to trade upon the goodwill of the petitioner. The court also noted that the petitioner had successfully obtained multiple trademark registrations for “Diamond” across various categories, reinforcing its proprietary rights. Additionally, the respondent’s prior relationship with the petitioner further demonstrated a likelihood of dishonest intent in adopting a deceptively similar mark.
In its final judgment, the court ruled in favour of the petitioner and ordered the removal of the “Green Diamond” mark from the Trade Marks Register. The court held that the respondent’s mark was deceptively similar to the petitioner’s well-known “Diamond” trademark and was likely to cause confusion among consumers. The court also directed the Registrar of Trade Marks to issue a notification confirming the cancellation of the impugned mark.
This case serves as a significant precedent in trademark law, particularly concerning the protection of well-established brands against deceptively similar marks. The judgment reinforces the principle that even generic words, when associated with a specific brand over a long period, can acquire distinctiveness and deserve legal protection. The ruling also underscores the importance of preventing dishonest adoption of marks by former business associates who seek to capitalise on an established brand’s goodwill. By successfully securing the cancellation of the “Green Diamond” mark, Diamond Modular Pvt. Ltd. has reaffirmed its rights over the “Diamond” brand and set a strong example for brand protection in the commercial sector.