Delhi District Court
Anil Jain vs Rajan Bhutani on 3 June, 2025
IN THE COURT OF GORAKH NATH PANDEY
DISTRICT JUDGE (COMMERCIAL COURT-08),
CENTRAL DISTRICT, TIS HAZARI COURTS: DELHI.
CS (COMM.) 883/2024
CNR NO.DLCT01-000423-2024
ANIL JAIN
(TRADING AS MAHAVIRA TRACTORS)
2760/B4, Hamilton Road, Mori Gate,
New Delhi - 110006. ........ Plaintiff.
VERSUS
RAJAN BHUTANI
(PROP. OF M/S. S. B ENTERPRISES)
L-12, Mahindra Park,
New Delhi - 110033. .............. Defendant
Date of Institution : 16.08.2024
Date of final arguments : 31.05.2025
Date of decision : 03.06.2025
Decision : Dismissed.
JUDGMENT:-
1. This suit has been filed by the plaintiff against the defendant seeking reliefs of permanent injunction restraining the defendant from infringing and passing off Trademark; rendition of accounts & damages etc. BRIEF FACTS OF THE CASE:
2. As contended, the plaintiff has been in the business of providing goods/services of Mechanical Seals for use in Pumps since 2001. On 22.04.2004, the plaintiff filed an application for the registration of the trademark 'REAL DIAMOND' bearing CS (Comm) 883/2024 Page No. 1 of 21 ANIL JAIN VS. RAJAN BHUTANI no.1280031 in Class - 07, which is valid and subsisting till date. The plaintiff commenced its business under the name and distinctive artistic styled trademark 'REAL DIAMOND' with a vision to provide best quality products/services to various customers. The plaintiff is a very reputed entity with very good reputation in market and the trademark/label 'REAL DIAMOND' is exclusively associated with the plaintiff alone and none else.
It is further contended that during a routine search on the online data base of trademark registry, the plaintiff came to know that the defendant filed a deceptively similar mark 'STAR DIAMONDS' bearing TM Application no.6198262 in Class 07 for 'Mechanical Seals'. The plaintiff filed an opposition against the mark of defendant before the trademark registry which is sub- judice. As per the records available with the trademark registry, the defendant filed their application under impugned trademark/label 'STAR-DIAMONDS' in the year 2023 on the basis of proposed to be used. In the month of April, 2024, during a market survey, the plaintiff through its resources came across the defendant product under the impugned mark/label 'STAR DIAMONDS' being sold in the market of Delhi which is deceptively similar to the registered trademark of the plaintiff 'REAL DIAMOND'.
It is stated that the plaintiff on market survey revealed that the defendant have started selling and supplying their counterfeited products throughout India.
It is alleged that the defendant adopted the impugned CS (Comm) 883/2024 Page No. 2 of 21 ANIL JAIN VS. RAJAN BHUTANI trademark 'STAR DIAMONDS' which is deceptively similar to the plaintiff's trademark/artistic label 'REAL DIAMOND' for selling its products. The defendant has also been targeting the dealers/distributors of the plaintiff and offering/selling counterfeited items under deceptively similar trademark/label 'STAR DIAMONDS' at cheaper prices. Further, the adoption of the impugned mark by the defendant amounts to trademark infringement, passing off and unfair competition. Hence the present suit is filed with the following prayer:
(a) Pass an order/decree of permanent and mandatory injunction restraining the defendant, their partners, their assignees in business, franchisees, licensees, distributors and agents from manufacturing, selling, offering for sale advertising in print and electronic media, advertising on the internet, directly or indirectly dealing in any product by using infringing mark 'STAR DIAMONDS' and its formative trademarks or any other trademark/trade name or logo/device which is identical to and/or deceptively similar to the plaintiffs well known trademark 'REAL DIAMOND' amounting to infringement of the plaintiff's registered trademark;
(b) Pass an order/decree of permanent and mandatory injunction restraining the defendant, their partners/associates, assignees in business, franchisees, licensees, distributors and agents from manufacturing, selling, offering for sale, advertising in print and electronic media, advertising on the internet, directly or indirectly dealing in any product by using impugned mark/trade dress viz. 'STAR DIAMONDS' or any other trade CS (Comm) 883/2024 Page No. 3 of 21 ANIL JAIN VS. RAJAN BHUTANI mark or logo/device which is identical to and/or deceptively similar to the plaintiff's well known trade mark, trade dress, get up, lay out and placement of distinctive features as used in the trade mark/label 'REAL DIAMOND and its trade dress which amounting to action of passing off, misrepresentation, unfair competition and dilution.
(c) Pass an order/decree of delivery up of all the counterfeited products bearing the impugned trade mark/trade dress including packing materials, dies, blocks, boxes, advertising and publicity material, stationary, account books etc. to an authorized representative of the plaintiff for the purposes of destruction and erasure;
(d) Pass an order/decree of rendition of accounts of illegal profits earned by the defendant on account of the use of the impugned trade mark and trade dress;
(e) Pass an order/decree of damages to the tune of Rs.10,05,800/- or any additional amount in favour of the plaintiff and against the defendant on account of loss/harm caused to the plaintiff's business, trademark/trade dress, goodwill and reputation by illegally and unlawfully selling the counterfeited products under the impugned trademark/trade dress by the defendant;
(f) Pass an award costs of the present proceedings in favour of the plaintiff and against the defendant;
(g) Pass any other order(s) which this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case and in interest of justice.CS (Comm) 883/2024 Page No. 4 of 21
3. The defendant filed reply to the plaint contending that the plaintiff is having no exclusivity of the trademark at all as the Diamond is being used in the same class by N number of the persons and also various trademarks registered with prefix and suffix; the suit of the plaintiff is liable to be dismissed under Order VII Rule II of the CPC and also 12A of CPC. While denying the other contents of the plaint, it is prayed that the suit of the plaintiff be dismissed with costs.
4. The plaintiff filed the replication to the written statement of the defendant reiterating the contents of the plaint and denying the averments made in the written statement.
5. In view of the pleadings of the parties, the following issues were framed vide order dated 18.11.2024 for adjudication of the case:
(1) Whether the plaintiff is entitled to decree of permanent and mandatory injunction as prayed for? ....OPP (2) Whether the plaintiff is entitled to decree of rendition of accounts as prayed for? ...OPP (3) Whether the plaintiff is entitled for damages as prayed for? ...OPP (4) Relief.
6. The evidence in this case was recorded before the Local Commissioner appointed vide order dated 22.11.2024. The plaintiff examined his AR Sh. Anil Jain as PW1 vide his affidavit CS (Comm) 883/2024 Page No. 5 of 21 ANIL JAIN VS. RAJAN BHUTANI Ex.PW1/A who deposed as per the averments in the plaint and also relied upon the following documents:
(1) GST registration certificate of plaintiff as Ex.PW1/1. (2) Sales Tax Registration certificate of plaintiff as Ex.PW1/2 (OSR).
(3) Status report of trademark application filed by the plaintiff as Ex.PW1/3 (Colly).
(4) Trademark registration certificate obtained by plaintiff as Ex.PW1/4 (Colly).
(5) Copy of application filed for obtaining legal proceedings certificate as Ex.PW1/5.
(6) Copy of application (TM-C) filed by the plaintiff alongwith status report as Ex.PW1/6 (Colly). (7) Copy of certificate of sales turnover duly certified by Chartered Accountant as Ex.PW1/7 (OSR). (8) Copy of invoices for the mark REAL DIAMOND as Ex.PW1/8 (Colly).
(9) Copy of invoices for the mark READ DIAMOND as Ex.PW1/9 (Colly).
(10) Copy of screen shot of plaintiff products available on various e-commerce platforms as Ex.PW1/10 (Colly). (11) Copies of advertisement done by the plaintiff as Mark A. (12) Copy of e-mail dated 30.08.12 as Ex.PW1/12. (13) Copy of e-mail dated 19.05.18 as Ex.PW1/13. (14) Status of the GST registration of the defendant as Ex.PW1/14.CS (Comm) 883/2024 Page No. 6 of 21
ANIL JAIN VS. RAJAN BHUTANI (15) The status of the trademark application filed by the defendant as Ex.PW1/15.
(16) Copy of the notice of opposition filed against the impugned trademark of the defendant as Ex.PW1/16. (17) Copy of counter statement filed by the defendant before Trademark Registry as Ex.PW1/17. (18) Copy of cease and desist notice sent by the plaintiff to the defendant as Ex.PW1/18.
(19) Copy of the reply of cease and desist notice as sent by the defendant as Ex.PW1/19.
(20) Original packaging of the plaintiff product under REAL DIAMOND as Ex.PW1/20.
(21) The original packaging of the defendant product under STAR DIAMOND as Ex.PW1/21.
(22) Original affidavit of authorised signatory plaintiff under order XI Rule 6(3) of the Commercial Courts Act as Ex.PW1/22.
(23) Certificate under Section 63 of the Bhartiya Sakshya Adhiniyam 2023 as Ex.PW1/23.
7. The plaintiff Anil Jain examined himself as PW2 vide his affidavit of evidence Ex.PW2/A and relied upon the documents already exhibited by PW1 as Ex.PW1/1 to Ex.PW1/23.
8. The plaintiff further examined his CA Sh. Ashish Jain as PW3. He also relied upon the document already exhibited by CS (Comm) 883/2024 Page No. 7 of 21 ANIL JAIN VS. RAJAN BHUTANI PW1 as Ex.PW1/7.
9. In rebuttal, the defendant examined his SPA Holder Sh. Vanish Bhutani as DW1 who deposed vide affidavit Ex.DW1/A. He also rely upon the following documents:
(i) Copy of the packaging used by the defendant for their products as Ex.PW1D1.
(ii) Copy of the packaging used by the plaintiff or their third party manufacturing as Ex.PW1/D2.
(iii) Certificate under Section 63, BSA, 2023 as Ex.DW1/3.
(iv) Special Power of Attorney as Ex.DW1/4 (OSR).
10. I have heard the final arguments addressed by the counsel for the parties and gone through the records as well. I have also gone through the written submissions and additional written submissions filed on behalf of the plaintiff. Ld. Counsel for the plaintiff submitted that the plaintiff is entitled for decree of permanent and mandatory injunction as the trademark of the plaintiff is to be considered as a whole i.e. composite trademark and probability of confusion and deception in the minds of the purchaser. It is further argued that the matter is to be decided on the basis of consumer perception and the test of likelihood of confusion. The counsel for the plaintiff also relied upon the following case laws:
(i) South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc. decided by Hon'ble High Court of Delhi on CS (Comm) 883/2024 Page No. 8 of 21 ANIL JAIN VS. RAJAN BHUTANI 13.10.14 in FAO (OS) No.389/14;
(ii) Neon Laboratories Ltd. Vs. Themis Medicare Ltd. Notice of Motion (L) No.827/2014 in Suit (L) No.336/14 decided by Hon'ble High Court of Bombay decided on 16.09.2024;
(iii) Zydus Healthcare Ltd. and Ors. Vs. Alder Biochem Pvt. Ltd. decided by Hon'ble High Court of Delhi on 13.11.24 in CS (Comm) No.516/23;
(iv) Kiran Sehgal and Ors vs. Veena Aggarwal decided by Hon'ble High Court of Delhi on 10.01.25 in FAO (Comm.) No.5/25;
(v) The Indian Hotels Company Ltd. and Ors. vs. Jiva Institute of Vedic Science and Culture;
(vi) Burger King Corporation Vs. Ranjan Gupta and Ors., decided by Hon'ble Delhi High Court on 06.03.2023 reported MANU/DE/1417/2023; and
(vi) Sanofi India Ltd. Vs. Universal Neutraceuticals Pvt. Ltd. decided by Hon'ble Delhi High Court on 15.10.2024 reported MANU/DE/2670/2014.
Ld. Counsel for the defendant per contra submitted that the plaintiff is not entitled for any relief as the trademark stated to be registered in the name of the plaintiff i.e. 'Diamond' is a generic word; more than 100 trademarks are registered under clause 7 having the word 'Diamond' and the plaintiff can not claim domain on the word mark. The Ld. Counsel for the defendant also read the pleadings of the parties alongwith the evidence of the parties recorded before the court in support of the contention that the plaintiff is not entitled for any relief and the CS (Comm) 883/2024 Page No. 9 of 21 ANIL JAIN VS. RAJAN BHUTANI suit is liable to be dismissed with costs. It is further argued that the plaintiff does not prove the sufferance of any damages as claimed in the plaint. The Ld. Counsel for the defendant further relied upon the below mentioned judgments in support of his contentions:
(i) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. decided by Hon'ble Supreme Court in Civil Appeal No.2372/2001 dated 26.03.2001;
(ii) Carborundum Universal Ltd. vs. Parth Trading Company decided by Hon'ble High Court of Delhi on 09.05.08 in CS (OS.) No.949/2002;
(iii) USV Ltd. vs. M/s. Aurobindo Pharma Ltd. and Ors.
decided by Madras High Court in (T) CMA (TM) No.32 of 2023 dated 26.07.24; and
(iv) M/s. ITC Ltd. Vs. Nestle India Ltd. decided by Madras High Court in CS No.231 of 2013 dated 10.06.20.
11. My issue-wise findings are as under:
ISSUES NO.1 TO 3:
(1) Whether the plaintiff is entitled to decree of permanent and mandatory injunction as prayed for? ....OPP (2) Whether the plaintiff is entitled to decree of rendition of accounts as prayed for? ...OPP (3) Whether the plaintiff is entitled for damages as prayed for? ...OPP
12. It is now well settled / laid down by our own Hon'ble CS (Comm) 883/2024 Page No. 10 of 21 ANIL JAIN VS. RAJAN BHUTANI High Court in case titled as Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd., 2003 (27) PTC 63 (Del) as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered.
For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para- 7).
13. To succeed in the case, the plaintiff is required to proof that he has commercial goodwill and the purchasers are exploited dishonestly from the defendant's products. The product of the plaintiff have required goodwill and reputation. The conception of passing off is that the goods are in effect telling a falsehood and misleading. The deception of the ordinary CS (Comm) 883/2024 Page No. 11 of 21 ANIL JAIN VS. RAJAN BHUTANI consumer is required to be proved by the plaintiff as well. It is relevant to reproduce the observation of Hon'ble Madras High Court in M/s. ITC Ltd. Vs. Nestle India Ltd. decided in CS No.231 of 2013 dated 10.06.20:
"177. While testing whether there is actual confusion or not by such copying, the court adopts the test of an ordinary person with an average intelligence and imperfect recollection. [See Corn Products Refining Co. v. Shangrila Good Products Ltd. (1960) (1) SCR 968 and Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484; AIR 1963 Supreme Court 449). In Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484:
AIR 1963 Supreme Court 449, on facts it was held that "To such a man the overall structural and phonetic similarity-of the two names "Amritdhara" and "Lakshmandhara" is, in our opinion, likely to deceive or cause confusion".
178. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Lgtd. (2001) 5 SCC 73, the Hon'ble Supreme Court observed as under:
Broadly stated, in an action passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.CS (Comm) 883/2024 Page No. 12 of 21
14. The brief and relevant facts for filing of the case has been mentioned at the outset. All these issues are examined and decided together being inter-related. Section 101 of the Evidence Act, 1872 defines "burden of proof" which is reproduced as below:-
"101. Burden of proof- whoever desires any court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts, must prove that those facts exist. When a person is bound to prove the existence of any fact, it is said that the burden of proof lies on that person."
Section 101 of the Evidence Act has clearly laid down that the burden of proving a fact always lying upon the person who asserts the facts. Until such burden is discharged, the other party is not required to be called upon to prove his case. The court has to examine as to whether the person upon whom the burden lies has been liable to discharge his burden. Until he arrives at such conclusion he cannot proceed on the basis of weakness of other party. Further, Section 58 of the Indian Evidence Act contained that no fact need to be proved in any proceedings which parties thereto or their agents agree to admit at the herein, or which, before the hearing, they agree to admit by any writing under their hands or which by any rule of pleadings enforce at the time they are deemed to have admitted by their pleadings.
15. It is well settled that a suit has to be tried on the basis of the pleadings of the contesting parties which is filed in the suit in the form of plaint and written statement and the nucleus of the case of the plaintiff and the contesting case of the defendant in CS (Comm) 883/2024 Page No. 13 of 21 ANIL JAIN VS. RAJAN BHUTANI the form of issues emerges out of that. Being a civil suit, this suit is to be decided on the basis of preponderance of probabilities.
In the case of Raj Kumar Singh & Anr. Vs. Jagjit Chawla, reported in 183 (2011) DLT 418, the Hon'ble High Court of Delhi was pleased to observe as under:-
"A civil case is decided on balance of probabilities. The balance of probabilities in the present case shows that the Power of Attorney Ex. PW3/1 and the Will Ex. P-1 were duly executed by the deceased Sh. Sohan Singh. The Power of Attorney is after all a registered Power of Attorney, and more importantly, the original title documents of the subject property are in the possession of the respondent No. 1 and which would not have been, if there was not to be any transfer of title in the suit property. Merely because two views are possible, this court would not interfere with one possible and plausible view which is taken by the court below, unless such view causes grave injustice. In my opinion, in fact, grave injustice will be caused not to the objectors/appellants but to the respondent No. 1 her father-in-law Sh. Sewa Singh, if the impugned judgment is set aside."
In the case of Vishnu Dutt Sharma Vs. Daya Sapra, reported in (2009) 13 SCC 729, the Hon'ble Supreme Court was pleased to observe as under:
''8. There cannot be any doubt or dispute that a creditor can maintain a civil and criminal proceedings at the same time. Both the proceedings, thus, can run parallel. The fact required to be proved for obtaining a decree in the civil suit and a judgment of conviction in the criminal proceedings may be overlapping but the standard of proof in a criminal case vis-a- vis a civil suit, indisputably is different. Whereas in a criminal case the prosecution is bound to prove the commission of the offence on the part of the accused beyond any reasonable doubt, in a civil suit "preponderance of probability" would serve the purpose for obtaining a decree".
16. The relevant Section 103 Indian Evidence Act, 1872 which cast onus on the parties to prove their contention is also CS (Comm) 883/2024 Page No. 14 of 21 ANIL JAIN VS. RAJAN BHUTANI reproduced for ready reference as under:
Section 103 Evidence Act, 1872: Burden of Proof as to particular fact The burden of proof as to any particular fact lies on that person who wishes the Court to believe in its existence unless it is provided by any law that the proof of that fact shall lie on any particular person. Illustration:
(a) A prosecutes B for theft, and wishes the Court to believe that B admitted the theft to C. A must prove the admission.
B wishes the Court to believe that, at the time in question, he was elsewhere. He must prove it.
17. It is claimed by the plaintiff that the defendant is using the trademark 'STAR-DIAMONDS' which is deceptively similar to the trademark of the plaintiff 'REAL DIAMOND'. Both the parties are dealing with the similar product i.e. mechanical sales. The trademark of the plaintiff is already registered whereas the mark of the defendant for registration is pending before the Registrar of Trademark. The name of both the brands is different and easily distinguishable/understandable. The plaintiff alleged that the trademark of the plaintiff was infringed by the defendant and hence this suit was filed. The defendant denied any infringement claiming no exclusivity of the trademark by the plaintiff as the same is used by number of persons and various trademark registered with prefix and suffix word Diamond. Even during arguments, the defendant reiterated that the mark of the defendant is different and unlikely to deceive the customers or there is no likely deception of the products.
18. The PW1 Sachin Jain filed his affidavit by way of evidence and reiterated the averments made in the plaint. The CS (Comm) 883/2024 Page No. 15 of 21 ANIL JAIN VS. RAJAN BHUTANI witness was cross-examined at length and during cross- examination, the testimony of the witness appears to be totally shattered. The original packaging of the product of the plaintiff i.e. 'Real Diamond' i.e. Ex.PW1/20 and product of the defendant i.e. 'Star Diamond' i.e. Ex.PW1/21 was also relied by the witness and compared. It is noted that the suit is filed in the name of Anil Jain trading as M/s. Mahavira Tractors. The plaint is filed and signed by Sachin Jain, who claimed to be the authorized person of the plaintiff but no authority letter is filed in the name of Sachin Jain to file the suit and depose in the court. The witness PW1 during cross-examination admitted that he was never authorized by his father in any other court case. The witness during cross-examination admitted that many of the trademark with 'Diamond' word is registered. He further admitted that after the registration of the trademark of the plaintiff i.e. Real Diamond, many other trademarks with suffix and prefix with diamond has been registered with different products in class 7. The witness further deposed that:-
"At this stage the witness is shown Ex.PW1/20 & 21 to which witness has relied that it is correct that below the diamond word in the logo the SB ENTERPRISES is clearly written and can be read easily. It is correct that the word MANUFACTURED and MARKETED by SB ENTERPRISES (Delhi) which is clearly readable. It is correct that I can recognise the word SB ENTERPRISES written in the lower side of the front packaging from the 5 feet distance. It is also correct in the plaintiff packaging the picture in front side mechanical seal is printed which is clearly visible. It is correct that while comparing both the packaging the mechanical seal picture alongwith the words 'fit and forget' is not printed on the defendant's packaging".
XXXX XXXX XXXX CS (Comm) 883/2024 Page No. 16 of 21 ANIL JAIN VS. RAJAN BHUTANI It is correct that the word printed front side of packaging are different. On my packaging, it is pointed the mechanical seals and in the defendant's packaging, it is printed water pump seals. It is correct that the word the plaintiff's name Mahavira Tractors is not printed on the defendant's packaging. I can read the word Mahavira Tractors on Ex.PW1/20 from at a 5 feet distance. It is correct that the defendant's font size of their names SB ENTERPRISES is two times more in size than the plaintiff's name. It is correct that the lower portion of both the packaging which is marked from X1 to X2 and from X3 to X4 (pages no.243 and 244 of the plaint) are different. It is correct that the small boxes are not printed on the plaintiff's packaging anywhere which is printed on the defendant's packaging. It is correct that we have no patent, copyright and trademark on the colour green, blue or white or any combination thereof.
XXXX XXXX XXXX It is correct that the logo of "star diamond" of the defendant which is printed in my petition, amended petition, rejoinder or on my evidence of affidavit is not reflecting the name of the defendant over the logo i.e. SB ENTERPRISES".
The witness further deposed during cross-examination that:
"It is correct that packaging Ex.PW1/D3 is different with Ex.PW1/21 as the colour of the "star" word is different and also watermark of mechanical seal pi cures is showing differently though rest are the same. I am not aware that Ex.PW1/D1 is also the packaging of defendant. I am not aware that Ex.PW1/D2 is also selling in the name of "M. U. DIAMOND" in the market".
As regards the goodwill and reputation of the plaintiff in the market, the witness admitted that the plaintiff did not have any R&D lab. The witness further deposed that :-
"It is correct that we have no ranking recognised as the manufacturer of mechanical seal. It is correct that company is not having individual website, which is owned, operated, maintained by the plaintiff for sales, marketing and promotion.CS (Comm) 883/2024 Page No. 17 of 21
ANIL JAIN VS. RAJAN BHUTANI I do not remember whether we have invested in R&D of the product and taken the income tax benefit for the same. I do not remember how much money have been invested in last 3-4 years in the advertising of the product and I can not produce the proof of the amount which we have invested in the advertisement.
XXXX XXXX XXXX We have around 100 customers in last 3 years whom we have supplied our goods. It is correct that we have filed the opposition against the defendant trademark which is pending before the trademark authority. It is wrong to suggest that the Gandhi scientific Co. Prem Nagar, Delhi was using the DIAMOND logo with the diamond word using prior to us. It is correct that Gandhi Scientific Company has filed a case against us. It is also correct that settlement has been executed between Anil Jain and the Gandhi Scientific Com and the Rajesh Gandhi where dispute was settled which is filed in this petition (page no.236-242).
XXXX XXXX XXXX It is correct that the plaintiff's company has not valued its goodwill in the books of account. It is correct that the MRP given on Ex.PW1/13 is true and correct".
Admittedly, the plaintiff has not placed any documentary evidence regarding the sale of the brand of plaintiff and defendant as claimed. I have also seen the artistic layout of the packaging of both the brands which do not appear to be deceptively similar to confirm infringement of the product of the plaintiff. As held by Hon'ble Delhi High Court in Carborundum Universal Ltd. vs. Parth Trading Company decided on 09.05.08 in CS (OS) No.949/2002, the plaintiff can not claim the exclusive right on the word 'Diamond' and there is no restriction on the companies in choosing the name of generic word. The plaintiff failed to prove any distinction, goodwill or reputation as claimed CS (Comm) 883/2024 Page No. 18 of 21 ANIL JAIN VS. RAJAN BHUTANI in the plaint. The testimony of PW2 and PW3 are not helpful nor sufficient to prove the claim of the plaintiff. The DW1 also filed his evidence by way of affidavit and deposed regarding the defence of the defendant. There is nothing in the testimony of DW1 as well to support the case of the plaintiff.
To prove the infringement of the mark, the plaintiff was under obligation to prove that the defendant's mark is identical with or deceptively similar to the registered trademark of the plaintiff and the defendant's use of mark is in course of trade in respect of the goods covered by registered trademark. Both the marks are compared as a whole. On comparison itself as well as admitted by PW1 during cross-examination, the marks of the plaintiff and defendant are not identical or cause confusion. The mark of the defendant is neither visually nor even phonetically similar to the mark of the plaintiff.
The plaintiff alleged to suffer damages to the tune of Rs.10,05,800/- but no such record is filed to prove any damages suffered by the plaintiff. Even the plaintiff has not filed any data of sale by the defendant or the area alongwith magnitude of the same. In view of the absence of empirical data, the claim of the plaintiff regarding the damages and rendition of account appears to be without any basis.
19. The testimony of the witnesses examined by the parties and the documents on record reaches to the conclusion that the plaintiff failed to prove any damages by the defendant as claimed. Further, it is noted that registered Trademark of the CS (Comm) 883/2024 Page No. 19 of 21 ANIL JAIN VS. RAJAN BHUTANI plaintiff is distinguishable and not deceptively similar to the word mark of the defendant. The allegations of the plaintiff against the defendant remained unsubstantiated with any credible evidence with respect to the infringement of the trademark. It is reiterated that the plaintiff failed to prove the loss of earning or goodwill/reputation. The ratio of the judgements relied by the plaintiff is not applicable in the facts and circumstances of the case.
20. In view of the testimony of the witnesses examined by the parties and documents on record, aforementioned discussions and examining the case on the basis of preponderance of probabilities, this court is of the considered opinion that the plaintiff has failed to discharge the onus and prove the issues. Issues No. (1) to (3) are accordingly decided against the plaintiff.
In view of the above said discussions and findings, this court is of the considered opinion that plaintiff is not entitled for the relief as prayed in the suit. The suit of the plaintiff is, therefore, dismissed.
21. Decree sheet be drawn accordingly.
22. The copies of the judgement be issued to all the parties to the dispute through Electronic Mail. Judgment be also uploaded on the server.
CS (Comm) 883/2024 Page No. 20 of 2123. File be consigned to Record Room after necessary GORAKH Digitally signed by compliance.
GORAKH NATH PANDEY
NATH Date: 2025.06.05
PANDEY 14:59:26 +0530
Announced in the open court (GORAKH NATH PANDEY)
on 03 June, 2025.
rd
District Judge (Commercial Court-08)
Central: Tis Hazari Courts, Delhi.
CS (Comm) 883/2024 Page No. 21 of 21
ANIL JAIN VS. RAJAN BHUTANI