The court established that the respondent's trademark 'GREEN DIAMOND' was a dishonest adoption of the petitioner's trademark 'DIAMOND', leading to confusion and passing off, warranting cancellation of the registration.

JUDGMENT :

MINI PUSHKARNA, J.

1. The present rectification petition has been filed seeking removal/cancellation of the trademark "GREEN DIAMOND" (Device)  registered under No. 4290006 in Class 09 registered in the name of Yash Arora trading as Siddhi Vinayak Traders/respondent no. 1 from the register or rectification of the register under Section 57/125 of the Trade Marks Act, 1999.

2. The case as canvassed by the petitioner, is as follows:

2.1. The petitioner, through its predecessors, is engaged in the business of manufacturing and marketing electrical goods, LED light, switches, and electrical accessories since the year 1975. Petitioner's predecessor adopted and started using the trademark and trade name DIAMOND in relation to their goods and business in the year 1975 itself.

2.2. Over the years, the petitioner's goods and business under the said trademark has seen a consistent growth and has become a household name that i s synonymous with "LED" in India.

2.3. The petitioner has emerged as a multi-edition, multi-product organization, and a clear leader in the segments it operates in, and had a turnover of Rs. 23,70,90,206/- Crores during the Financial Year 2020-2021 in respect of the retail stores under the said trademark.

2.4. The petitioner has acquired formidable goodwill and reputation in the industry under its said trademark by adhering to the highest standard of quality, extensive advertising, and marketing. An illustrative list of the trademark "DIAMOND" duly registered under the Trade Marks Act, 1999 , as given in the petition, is reproduced as under:

2.5. The petitioner is also carrying on its business activities under the said trademark on the internet through its website namely https://www.diamondindia.co.in/ . The petitioner has been using the said domain name in course of trade and as a proprietor thereof in relation to its said goods and business under the said trademark, and has built up a valuable trade, goodwill, and reputation there under.

2.6. The petitioner has built up a valuable trade under its said trademark and conducted handsome business thereunder running into crores of rupees worldwide. The year wise sales figures of the petitioner, under the said trademark, as given in the petition, are as follows:

2.7. The said trademark has become distinctive, associated, and acquired secondary significance with the petitioner and petitioner's said goods a nd business. The purchasing public, the trade and industry at large worldwide and in India identify and distinguish the petitioner's said goods and business under the said trademark with the petitioner's source and origin alone.

2.8. The respondent no. 1 claims to be engaged in the identical trade and business as that of the petitioner. The impugned trade mark "GREEN DIAMOND" (Device) applied for under Trade Mark No. 4290006 in Class 09 in relation to Electrical Accessories including Wire and Cables, Electrical Conduit, Switch & Switches Accessories etc ., is not registrable under the Act.

2.9. The impugned trade mark is neither distinctive nor capable of distinguishing the impugned goods applied for and nor does it satisfy the requirements of the Trade Marks Act, 1999 as to its registrability.

2.10. The respondent no. 1 by its impugned adoption, registration, and user of the impugned trademark “GREEN DIAMOND” (Device)  is violating the petitioner's said trademarks/labels and thereby infringing or likely to infringe the petitioner's said trademarks/labels and registered copyright, and pass off their goods and business as that of the petitioner.

2.11. The petitioner was not aware of impugned registration as the advertis