RFA(COMM) 166/2025 Page 1 of 30

$~95

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ RFA(COMM) 166/2025

DIAMOND MODULAR PVT. LTD. .....Appellant

Through: Mr. Rishi Bansal, Mr. S.K.

Bansal, Mr. Rishabh Gupta, Mr. Ajay

Amitabh Suman, Mr. Deepak Shrivastava

and Ms. Shruti Manchanda, Advs.

versus

VIKASH KUMAR & ANR. .....Respondents

Through:

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE AJAY DIGPAUL

JUDGMENT (ORAL)

% 05.05.2025

C. HARI SHANKAR, J.

1. CS (Comm) 444/2023

1

filed under Sections 134 and 135 read

with Section 27(2) of the Trade Marks Act, 1999, stands dismissed by

the learned District Judge (Commercial Court)-05, South, Saket

2

by

judgment dated 15 October 2024. Aggrieved thereby, Diamond

Modular Pvt Ltd, the plaintiff in the suit, has preferred the present

appeal.

Facts

1

Diamond Modular Pvt Ltd v Vikash Kumar and Anr

2

“the learned Commercial Court”, hereinafter

RFA(COMM) 166/2025 Page 2 of 30

2. Case set up by the appellant in its plaint

2.1 CS (Comm) 444/2023 was instituted by the appellant, alleging

that the respondents had, by using the mark DIAMOND GOLD,

infringed the appellant’s trademark ‘DIAMOND’, registered in the

appellant’s favour in Class 11 for Lamp Shade Holders and in Class 9

for electric switches, plugs, sockets, accessories and parts thereof. A

tabulated list of the appellant’s trade mark registrations may be

depicted thus:

S No Trademark &

Date of

Application

Application

No., Class

and User

Claimed

Goods

Valid Upto And

Disclaimer if any

1.

DIAMOND

28.08.1984

426403

Class 09

01/04/1975

Electric

Switches,

Plugs

Sockets,

Accessories

and Parts

thereof

included in

Class 9.

Registered, Renewed till

28/08/2025;

No

disclaimer

2. DIAMOND

08.04.1996

709611

Class 09

Proposed

Electric

Switches,

Sockets,

Connector,

Plug, Pin,

Top,

Regulators,

Dimmers,

Choke,

Patti, Starter

Registered, Renewed till

08/04/2033;

No

Disclaimer

3. DIAMOND

10.12.1998

831578

Class 09

Electrical

Accessories

Registered, Renewed till

10/12/2028;

RFA(COMM) 166/2025 Page 3 of 30

01/01/1975 including

Switches,

Sockets,

Plug,

Top, Pin,

Holder,

Fuse,

Connector,

Jointer,

Voltage

Stabilizer,

Transformer

, Iron,

Kettle,

Wires and

Cables,

Conduit

Pipes,

Dimmer,

Timer,

Choke,

Patti, Starter

No

Disclaimer

4.

08.06.1978

337296

Class 11

01/04/1975

Lamp

Shade

Holders

Registered, Renewed till

08/06/2026;

No

Disclaimer

5. DIAMOND

10.12.1998

831577

Class 11

01/01/1975

Electrical

fans and

Parts

thereof,

Coolers and

Parts

thereof,

Geyser,

Boiler,

Chimney,

Ovens, Hot

Case,

Hot Plates,

Toaster,

Roaster,

Griller,

Coffee

Percolator,

Coffee

Filter,

Water

Registered, Renewed till

10/12/2028;

No

Disclaimer

RFA(COMM) 166/2025 Page 4 of 30

Filter, Hair

Dryer, Gas

Lighter,

Massager,

Immersion

Rod,

Heaters,

Heat

Convector,

Heating

Elements,

Cooking

Range,

Food

Processors,

Electric

Pressure

Cooker, Gas

Tandoor,

Gas

Stoves,

Stoves,

Burner,

Tubes for

Lighting

and

Fitting

thereof,

Emergency

Lights,

Torches,

Electric

Bulbs,

Lamps, All

being

goods

included in

Class 11.

2.2 It was also alleged that the respondents were using a trade dress

which was visually and structurally deceptively similar to that of the

appellant.

RFA(COMM) 166/2025 Page 5 of 30

2.3 The appellant claimed that it had been dealing in electrical

goods and accessories since 1975, either itself or through its

predecessor-in-interest. By dint of continuous user, the appellant

claimed to have built up a considerable reputation in the asserted mark

‘DIAMOND’, which had become a source identifier for the appellant.

The appellant further asserted that the art work employed by it, was an

original artistic work within the meaning of Section 2(c) of the

Copyright Act, 1957, which was enforceable in law. The appellant

also claimed to be the owner of the interactive website,

www.diamondindia.co.in. Under the asserted mark, the appellant was

dealing in switches, LED lights and was a leading market player.

During the financial year 2020-2021, the appellant claimed a turnover

in the region of ₹ 23.7 Crores. The DIAMOND mark was, therefore,

entitled to be treated as a well-known trademark, within the meaning

of Section 2(1)(zg) of the Trademarks Act.

2.4 The unregistered mark ‘DIAMOND GOLD ’ used by the

respondents, it was submitted, infringed the appellant’s registered

trademark ‘DIAMOND’. It was alleged that the respondent’s

trademark ‘DIAMOND GOLD’ was phonetically, visually and

structurally deceptively similar to the appellant’s registered trademark

‘DIAMOND’. Inasmuch as both the marks conveyed the same

meaning, the appellant also pleaded idea infringement.

2.5 The appellant further submitted that the respondent had, on 4

July 2022, applied for registration of its wordmark/device mark

‘DIAMOND GOLD’ in Classes 9, 11 and 35 in relation to wires and

RFA(COMM) 166/2025 Page 6 of 30

cables, switches, ceiling fans, electrical heaters and in respect of

services relating to trading and import and export of electronic

projects and electrical accessories. This was followed by further

applications of the same mark under Classes 11 and 35 on 1 July

2022. The appellant had objected to the said applications, which were

yet to be granted.

2.6 It was further alleged that the respondent was also operating

online through its website https://sites.google.com/view/wwwadf

ancom/home?authuser=0 as well as on Facebook, WhatsApp,

YouTube and G-mail, which were interactive in nature.

2.7 Predicated on these allegations, the appellant sought a decree of

permanent injunction restraining the respondents and all others acting

on their behalf from dealing in any manner, with the impugned trade

mark/trade name DIAMOND GOLD or with the device mark

DIAMOND GOLD or any other mark of which DIAMOND was a

part in relation to electric goods, electrical accessories, wires, cables,

lights, switches, fans or any other allied or cognate goods.

Additionally, the suit sought reliefs of delivering up, rendition of

accounts, damages and costs.

3. Despite issuance of summons, none appeared to contest the suit.

The respondents were, therefore, proceeded ex parte on 9 April 2024.

4. The appellant led the evidence of one Piyush Gupta as PW1.

PW1 Piyush Gupta filed his affidavit in evidence, of which the

RFA(COMM) 166/2025 Page 7 of 30

following passages merit reproduction:

“23. I say that the Defendants have adopted and started using the

impugned trademark dishonestly, fraudulently and out of positive

greed with a view to take advantage and to trade upon the

established goodwill, reputation and proprietary rights of the

Plaintiff in the Plaintiff's said trademark. I say that Dishonesty of

the Defendants is apparent from the fact that the Defendants are

carrying out the impugned activity/ business using the impugned

tradename and dealing with the impugned trademark/device in

respect to the impugned goods and are day by day expanding their

impugned business pan India through various offline and online

channels. The Screenshot of various impugned products bearing

impugned trademark are reproduced below:

24. I say that the Defendants are also operating via its website

in the URL

https://sites.google.com/view/wwwadfancom/home?authuser=0,

(hereinafter referred to as "impugned website") and also social

media platforms like www.facebook.com, www.whatsapp.com;

www.youtube.com and www.gmail.com which are interactive in

nature, wherein its impugned are being promoted and offered for

sale instantly Screenshots of the Defendant’s impugned website is

reproduced herein below:

RFA(COMM) 166/2025 Page 8 of 30

25. I say that the Defendant No.1 runs a Facebook page in the

RFA(COMM) 166/2025 Page 9 of 30

name of AD FAN bearing URL

https://www.facebook.com/profile.php?id=100065283828555,

wherein it promotes, advertises, solicits and markets impugned

goods bearing the impugned trademark DIAMOND

GOLD/DIAMOND GOLD with DEVICE to various consumers. I

say that the impugned Facebook page of the Defendant No.1

reveals the prices of impugned goods, email address for placing

orders, Phone number and the company website of the Defendant

no.1. The above details can be clearly seen from the screenshots

reproduced below:

Screenshot of Impugned Webpage in www.facebook.com showing

impugned goods in URL

:https://www.facebook.com/profile.php?id=100065283828555

RFA(COMM) 166/2025 Page 10 of 30

*****

27. I say that the Defendant has a Whatsapp business profile

and runs various other Whatsapp groups having consumers all

across India to promote, advertise, solicit, market and actively take

orders for delivery all across India. It is submitted that in order to

obtain a comprehensive understanding of the impugned business

activities of the Defendants, the Plaintiff approached the

Defendants over Whatsapp and the Defendants agreed to deliver

the impugned goods at the address A1/78, First Floor, Freedom

Fighters Enclave, South, New Delhi 110068. It is pertinent to

mention that the abovementioned address falls within the

jurisdiction of this Hon'ble Court i.e. South District, New Delhi.

The screenshots hereinbelow shows that the Defendant is actively

engaged in taking orders and promising to deliver the impugned

goods.

Screenshots of Whatsapp conversation with the Defendants and

Whatsapp group created by the Defendants wherein impugned

goods are promoted, solicited, marketed and sold to various

consumers:

RFA(COMM) 166/2025 Page 11 of 30

RFA(COMM) 166/2025 Page 12 of 30

*****

29. I say that in addition to the above, the Defendants are also

inviting, accepting orders of consumers across India through emails

via email address aenterprisescpn9155@gmail.com,

adhelpdiamondgold@gmail.com and

diamondgoldaccessories@gmail.com.

Findings in impugned order, submissions of appellant and our

findings

5. The learned Commercial Court has, in the impugned order,

addressed four aspects. They are

RFA(COMM) 166/2025 Page 13 of 30

(i) the territorial jurisdiction of the learned Commercial

Court to entertain the suit,

(ii) merits,

(iii) the issue of whether the asserted trade mark

‘DIAMOND’ has been validly assigned to the appellant and

(iv) whether Mr. Piyush Gupta, in whose favour Board

Resolution as well as SPA (Ex. PW-1/28) have been issued by

Mr. Rajesh Gupta, was competent to depose in the matter.

6. Re. territorial jurisdiction

6.1 On the aspect of territorial jurisdiction, the findings of the

learned Commercial Court are somewhat confusing, but, in the

ultimate eventuate, the learned Commercial Court appears to have

proceeded on the premise that it possesses territorial jurisdiction to

deal with the matter.

6.2 Para 10 of the impugned order notices the submission of the

appellant that the respondents were targeting customers within the

jurisdiction of the Saket Commercial Court and were selling goods in

Saket, Hauz Khas, Malviya Nagar etc. It has also noted the

submissions of the appellant that its authorised representative had, in

fact, entered into correspondence with the respondents, resulting in the

respondents undertaking to supply the goods at A1/78, Freedom

Fighters Enclave, South, New Delhi-110068 which fell within the

jurisdiction of the Saket Commercial Court.

RFA(COMM) 166/2025 Page 14 of 30

6.3 Following this, it has noted the reliance, by the appellant, on the

judgment of the Division Bench of this Court in Tata Sons Private

Ltd. v Hakunamatata Tata Founders

3

and has also referred to the

earlier decision of the another Division Bench of this Court in Banyan

Tree Holding (P) Ltd v A. Murali Krishna Reddy

4

.

6.4 The learned Commercial Court has thereafter referred to the

decision of a learned Single Judge of this Court in Burger King

Corporation v Techchand Shewakramani

5

, in which this Court has

held that, in the regime of e-commerce, even the mere advertising of

goods and services on the internet would render every Court, within

whose territorial jurisdiction the plaintiff’s website could be accessed,

territorially competent to entertain the suit and adjudicate thereon.

6.5 Following this, the learned Commercial Court has,

unfortunately, not returned any finding on the aspect of territorial

jurisdiction.

6.6 However, it has proceeded to deal with other aspects of the

matter, which indicates that the learned Commercial Court appears to

have proceeded on the premise that it has territorial jurisdiction.

6.7 Even in law, we are of the opinion that, given the extant legal

possession, the learned Commercial Court was possessed of territorial

jurisdiction to deal with the matter.

3

2022 SCC OnLine 2968

4

2009 SCC OnLine 3780

5

2018 SCC OnLine 10881

RFA(COMM) 166/2025 Page 15 of 30

6.8 Apropos the aspect of jurisdiction, as noted above, Mr. Bansal

has drawn our attention to the series of correspondence of the

appellant’s representative, situated within the jurisdiction of the Saket

District Court and the respondents, captured in the screenshots

contained in the paragraphs from the evidence of PW-1 extracted in

para 4 supra. The said correspondence has gone un-rebutted, as it was

proved by the representative of the appellant deposing as PW-1, and

he was never subjected to cross-examination.

6.9 As such, the evidence on record indicates that the respondents

agreed to supply goods to customers situated within the jurisdiction of

the Saket District Court.

6.10 This amounts to meaningful invocation of the jurisdiction of the

Saket District Court by the respondent and, therefore, itself made out a

case of jurisdiction of the Saket District Court to deal with the matter.

6.11 Moreover, even applying the law laid down by the Division

Bench of this Court in World Wrestling Entertainment, Inc. v

Reshma Collection

6

, as the appellant’s website was interactive and

could be accessed by any party within the jurisdiction of the Saket

District Court, the suit must be held to have been competently

instituted within the said jurisdiction.

6.12 We, therefore, hold that the learned Commercial Court acted

within jurisdiction in entertaining and proceeding to decide the matter.

6

2014 SCC OnLine Del 2031

RFA(COMM) 166/2025 Page 16 of 30

7. On merits

7.1 On merits, the findings of the learned Commercial Court, to the

extent they are of relevance, read thus:

“So far as the defendants own website is concerned, it has not been

placed on record by the Plaintiff that the orders could be placed

and money could be paid on the said website which had only

provided the catalogue of the products, in which defendants were

dealing. Admittedly, till the date of filing of the present suit, the

Plaintiff herein had been dealing in electrical switches and LED

lights, despite holding a registration in respect of fans, etc., which

are the products actually dealt by the defendants.

Furthermore, it is provided in the Section 34 of the Trademarks

Act itself that the goods in respect of which infringement has been

alleged must be produced/manufactured continuously and one or

two casual manufacturing would not give rise to a party to allege

infringement.

In the light of above legal positioning, no material has been placed

on record by the Plaintiff to show that Plaintiff was also

manufacturing/dealing in any manner whatsoever with the goods

such as ceiling fans, cables and wires in which defendant were

allegedly indulging.”

7.2 Thus, the learned Commercial Court has held against the

appellant on more than one ground.

7.3 Firstly, the learned Commercial Court has noted that the

appellant was not dealing in fans, but in electrical switches and LED

lights.

7.4 Secondly, it has held that Section 34

7

of the Trade Marks Act

7

34. Saving for vested rights.— Nothing in this Act shall entitle the proprietor or a registered user of

registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or

RFA(COMM) 166/2025 Page 17 of 30

requires the goods, in respect of which infringement is alleged, to be

produced/manufactured continuously, and does not allow a claim

alleging infringement to be raised on the basis of any casual

manufacture.

7.5 Neither of these findings of the learned Commercial Court is

sustainable either in law or on facts.

7.6 Re. nature of goods in respect of which the rival marks are used

7.6.1 The finding of the learned Commercial Court that the appellant

could not lay a claim of infringement against the respondent, as the

respondent was dealing in fans, whereas the appellant was dealing in

electrical switches and LED lights, is completely erroneous in law.

7.6.2 In the first place, actual use of the trademark by sale of the

goods in the market is not a pre-condition for a claim for infringement

of law. Section 28(1)

8

of the Trade Marks Act clearly confers, on the

registered owner of valid trademark, exclusive right to use the said

trademark and to obtain relief in respect of infringement of the

nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of

his has continuously used that trade mark from a date prior—

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the

proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or

services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the

second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.

8

28. Rights conferred by registration.—(1) Subject to the other provisions of this Act, the registration

of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use

of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to

obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

RFA(COMM) 166/2025 Page 18 of 30

trademark. Infringement is defined in Section 29

9

, and is available to

every proprietor of a registered trademark. Actual use of the registered

trademark is not a sine qua non for a valid claim for infringement to

lie.

7.6.3 No doubt, continued non-user of a trademark may confer a right

on another person to seek a removal of the mark from the register of

trademarks in terms of clause (a) of Section 47

10

of the Trade Marks

Act. That, however, is an independent right and does not impact, in

any way, the right of the registered trademark owner to seek relief

against infringement, where the registration is valid and subsisting,

9

29. Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person

who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a

mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in

respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be

taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person

using by way of permitted use, uses in the course of trade, a mark which because of—

(a) its identity with the registered trade mark and the similarity of the goods or services

covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or

services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services

covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an association with

the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to

cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person

using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade

mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due

cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the

registered trade mark.

10

47. Removal from register and imposition of limitations on ground of non-use.— (1) A registered

trade mark may be taken off the register in respect of the goods or services in respect of which it is registered

on application made in the prescribed manner to the Registrar or the [High Court] by any person aggrieved on

the ground either—

(a) that the trade mark was registered without any bona fide intention on the part of the

applicant for registration that it should be used in relation to those goods or services by him or, in a

case to which the provisions of Section 46 apply, by the company concerned or the registered user,

as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to

those goods or services by any proprietor thereof for the time being up to a date three months before

the date of the application; or

RFA(COMM) 166/2025 Page 19 of 30

under Section 28 (1) of the Trade Marks Act.

7.6.4 Moreover, the appellant is the holder of a valid trademark

registration, w.e.f. 28 August 1984 in Class 9 in respect of “electric

switches, plugs, sockets, accessories and parts thereof”, claiming user

since 1 April 1975, w.e.f. 8 June 1978 in Class 11 in respect of Lamp

Shade Holders and w.e.f. 10 December 1998 in Class 11 in respect of,

inter alia, electrical fans and parts thereof.

7.6.5 Thus, the appellant, as a holder of a registered trademark

specifically in respect of the aforenoted categories of electrical goods,

was entitled to protect the registered trademark from infringement by

others, who attempted to use any identical or deceptively similar

trademark for identical or similar goods or services. The learned

Commercial Court is clearly in error in holding against the appellant

on the ground that the respondent is not using the DIAMOND mark

for fans. Section 29(2)(a) and (b) of the Trade Marks Act includes,

within the ambit of “infringement”, use, by another person, of an

unregistered mark, which is likely to cause confusion or lead to a

presumption of association with the appellant, of a similar mark,

covering identical or similar goods. Within the ambit of the

expression “similar” would be encompassed all goods which are allied

or cognate to the goods or services in respect of which the asserted

mark is used. There is, therefore, no requirement of the rival marks

being used in respect of the same goods or services, as the learned

Commercial Court incorrectly presumes.

RFA(COMM) 166/2025 Page 20 of 30

7.6.6 Fans are electrical goods. Fans, and other electrical goods such

as switches and electrical fittings, are often manufactured by the same

manufacturer. They are, therefore, clearly similar, within the meaning

of Section 29(2)(a) and (b), to the electrical goods in respect of which

the appellant’s DIAMOND mark is registered, and in respect of which

it uses the said mark. As such, the mere fact that the appellant was

manufacturing electrical switches and LED lights, whereas the

respondent was manufacturing fans, could not be cited as a ground to

hold against the appellant on merits, in so far as his claim of

infringement against the respondents was concerned.

7.6.7 From the facts, it is clear that the appellant has both priority of

user and priority of registration over the respondent, in so far as the

mark DIAMOND is concerned. The appellant has a word mark

registration of the mark DIAMOND w.e.f. 28 August 1984 in respect

of electrical switches, plugs, sockets, accessories and parts thereof. It

also holds a registration of the word mark DIAMOND in Class 11 in

respect of electrical fans and parts thereof. The respondent does not

own any registered trademark. Without any registration in its favour,

the respondent has been using the mark DIAMOND GOLD in respect

of fans since July and December, 2022.

7.6.8 Clearly, the marks DIAMOND and DIAMOND GOLD are

deceptively similar to each other and, to a person of average

intelligence and imperfect recollection, there is every likelihood of

confusion, or of his presuming an association between the marks, as a

consequence of the similarity between the marks and the fact that both

RFA(COMM) 166/2025 Page 21 of 30

are used for electrical goods and appliances.

7.6.9 Ergo, a case of infringement, within the meaning of Section

29(2) of the Trade Marks Act is clearly made out, justifying

injunction.

7.7 Re. Section 34

7.7.1 The reliance, by the learned Commercial Court, on Section 34

of the Trade Marks Act, which has really nothing to do with the

controversy, is also completely misplaced.

7.7.2 Section 34 is a proscriptive provision, which acts as an

exception to a right to claim relief against infringement even where

the plaintiff’s mark is registered and the defendant’s is not. The

Section provides that the proprietor of a registered trademark cannot

restrain the use, by a person, of an identical or deceptively similar

trademark, where such latter person has priority both of registration

and of user over the person seeking injunction.

7.7.3 We are completely at a loss to understand how the learned

Commercial Court has read Section 34 of the Trade Marks Act as

requiring that the goods in respect of which infringement is alleged

have to be produced/manufactured continuously, or that casual

manufacture would not justify a claim for infringement. Nothing of

the kind is to be found in Section 34 of the Act.

RFA(COMM) 166/2025 Page 22 of 30

7.7.4 This finding is, therefore, clearly vitiated by non-application of

mind.

7.8 Thus, the two lone grounds on which the learned Commercial

Court has held against the appellant on merits cannot sustain.

8. Re. proprietorial right of the appellant over the asserted

DIAMOND trade mark

8.1 The third ground on which the learned Commercial Court has

non-suited the appellant is contained in the following single sentence

in the impugned order:

“Furthermore, the Plaintiff had also failed to adduce any evidence

to the effect of assignment of trademark by Smt. Lalita Gupta in

their favour as no assignment deeds as alleged in Para 5 and 6 of

the Plaint were either placed or proved on record.”

8.2 Adverting to this finding of the learned Commercial Court, Mr.

Bansal has taken us through the following paragraphs of the impugned

order, and the recital of facts contained therein:

“It was stated that Plaintiff through its predecessor was engaged in

the business of electrical goods and accessories since the year

1975. Plaintiff's predecessor had adopted and had started using the

trademark and trade name "DIAMOND" in relation to their said

goods and business in the year 1975 itself.

It was stated that Mrs. Lalita Gupta W/o Mr. R. D. Gupta and

thereafter her son Mr. Rajesh Gupta and daughter-in-law Ms. Priti

Gupta were the predecessors of the Plaintiff. Mrs. Lalita Gupta had

started her proprietorship business under the name and style of

"Diamond Products (India)" and had adopted and started using the

trademark "DIAMOND" in relation to her said goods and business

and her husband Mr. R. D. Gupta was stated to have been

RFA(COMM) 166/2025 Page 23 of 30

managing the affairs of the said business and thereafter, name of

her business changed to "New Diamond Electricals".

It was stated that Mrs. Lalita Gupta had carried on her said

business till the year 1995 and thereafter her business was taken

over by Ms. Priti Gupta. In the meantime, in the year 1984, Mr.

Rajesh Gupta had started his sole proprietorship business of

electrical goods and electrical accessories under the name and style

of "Diamond Enterprises", however, initially, he was permissive

user of the trademark DIAMOND and vide Assignment Deed dated

19.10.2001, the said trademark DIAMOND was assigned in his

favour.

It was stated further that Ms. Priti Gupta and Mr. Rajesh Gupta, for

the better management and expansion of the business had

incorporated the Plaintiff Company and Trademark "DIAMOND"

was also assigned in favour of the Plaintiff Company vide Deed of

Assignment Dated 19.07.2018. Ms. Priti Gupta and Mr. Rajesh

Gupta were stated to be the Directors of the Plaintiff Company.

It was stated that Plaintiff was the owner and proprietor of the

trademark DIAMOND and had started using the aforesaid

trademark as word mark in artistic logo/label form and in order to

get statutory protection, he got the said trademark registered in its

favour under the provisions of Trade Marks Act, 1999.”

8.3 Thus, in the plaint, as filed by the plaintiff, the precise case set

up was that the trade mark DIAMOND was adopted and user thereof

commenced, by Lalita Gupta, the predecessor of the appellant, in

relation to electrical goods, in 1975. Ms. Lalita Gupta continued the

business till 1995, in which year the business was taken over by Ms.

Priti Gupta, the wife of Mr. Rajesh Gupta. During this period, in 1984,

Rajesh Gupta commenced his sole proprietorship under the name

“Diamond Enterprises”. Vide assignment deed dated 19 October 2001,

Lalita Gupta assigned the trade mark DIAMOND in favour of Mr.

Rajesh Gupta. Further, by assignment deed dated 19 July 2018, Rajesh

Gupta assigned the trade mark DIAMOND in favour of the appellant

Diamond Modular Pvt Ltd.

RFA(COMM) 166/2025 Page 24 of 30

8.4 Having noted these observations as contained in the plaint, filed

by the appellant, the learned Commercial Court observes that the

appellant had “failed to adduce any evidence to the effect of

assignment of trade mark by Smt. Lalita Gupta in their favour as no

assignment deeds as alleged in paras 5 and 6 of the plaint were either

placed or proved on record.” Thus, the learned Commercial Court has

held that the appellant had failed to prove its proprietorial rights over

the registered trade mark DIAMOND as the assignment deeds dated

19 October 2001, whereby the trade mark was assigned by Ms. Lalita

Gupta to Mr. Rajesh Gupta, and 19 July 2018, whereby the trade mark

was assigned by Mr. Rajesh Gupta to the appellant, had not been

placed on record.

8.5 Mr. Rishi Bansal candidly acknowledges the fact that the

aforesaid assignment deeds had not been placed on record. He,

however, has drawn our attention to a Legal Proceedings Certificate

11

dated 12 March 2021 issued by the office of the Registrar of Trade

Marks. This certificate notes the fact that the word mark DIAMOND

stood registered in favour of the appellant Diamond Modular Pvt. Ltd.

The date of the certificate is 13 February 1998 and the registration is

effective from 28 August 1984, being the date when the application

for registration was filed before the Registrar.

8.6 The registration is for the word mark DIAMOND in Class 9

covering “electric switches, plugs, sockets, accessories and parts there

of included in Class 9”. At the foot of the LPC is to be found the

11

“LPC” hereinafter

RFA(COMM) 166/2025 Page 25 of 30

following history data:

“HISTORY DATA:

LALITA GUPTA RZ -283/47A, WEST BLOCK, VISHNU

GARDEN, NEW DELHI -110018 REGISTRATION RENEWED

FOR A PERIOD OF 10 YEARS FROM 28TH AUGUST, 2005

ADVERTISED IN JOURNAL NO 1334.

PURSUANT TO A REQUEST ON FORM TM -24 DATED 23RD

OCTOBER, 2001 AND ORDER THEREON DATED 1ST

DECEMBER, 2003 RAJESH GUPTA TRADING AS M/S

DIAMOND ENTERPRISES RZ -283/57, WEST BLOCK,

VISHNU GARDEN, NEW DELHI -110018, IS/ARE

REGISTERED AS SUBSEQUENT PROPRIETOR (S) OF THIS

MARK AS FROM 19TH OCTOBER, 2001 BY VIRTUE OF

ASSIGNMENT DEED DATED 19TH OCTOBER, 2001 & AN

AFFIDAVIT OF LALITA GUPTA DATED 19TH OCTOBER,

2001 & SHRI RAJESH GUPTA DATED 19TH OCTOBER, 2001.

REGISTRATION RENEWED FOR A PERIOD OF 10 YEARS

FROM 28/08/2015 ADVERTISED IN JOURNAL NO 1714

PURSUANT TO A REQUEST ON FORM TM -P DATED

19/07/2018 AND ORDER THEREON DATED 17/12/2019

DIAMOND MODULAR PRIVATE LIMITED HAS BEEN

BROUGHT ON RECORD AS SUBSEQUENT PROPRIETOR IN

RESPECT OF THE SAID REGISTERED TRADE MARK by

virtue of assignment deed dated 19/07/2018 and affidavit dated

19/07/2018

FURSUANT TO A REQUEST ON FORM TM -P DATED

19/07/2018 AND ORDER THEREON DATED 17/12/2019 THE

ADDRESS FOR SERVICE IS ALTERED TO SINGH & SINGH

LAW FIRM LLP, C-139, DEFENCE COLONY, NEW DELHI-

110024, TM@SINGH ANDSINGH.COM ”

8.7 The aforesaid LPC remained undisputed, as the respondent did

not choose to file any written statement. As Mr. Rishi Bansal correctly

points out, under Section 31(1)

12

of the Trade Marks Act, the

12

31. Registration to be prima facie evidence of validity.— (1) In all legal proceedings relating to a

trade mark registered under this Act (including applications under Section 57), the original registration of the

trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima

facie evidence of the validity thereof.

RFA(COMM) 166/2025 Page 26 of 30

registration of a trade mark is prima facie proof of its validity.

Inasmuch as no evidence to the contrary was led by the respondent,

who did not even choose to file any written statement, Mr. Bansal

submits that the history data as contained in the LPC was itself

sufficient to prove the aspect of proprietorial right of the appellant for

the asserted trade mark DIAMOND.

8.8 Having perused the aforesaid documents, we are inclined to

agree with Mr. Bansal. The LPC dated 12 March 2021, as issued by

the office of Registrar of Trade Marks clearly sets out the chain of

transfer of titular rights over the trade marks from Ms. Lalita Gupta to

Mr. Rajesh Gupta and thereafter from Mr. Rajesh Gupta to the

appellant Diamond Modular Pvt Ltd. The LPC was exhibited as PW-

1/11. In affidavit of evidence tendered by PW-1, the LPC stands

specifically exhibited as Ex PW-1/11. The verification, with which

the affidavit concludes, reads:

“Verification

I the above-named deponent do hereby verify that the some

contents of my above affidavit are on the basis of my personal

knowledge and records of the plaintiff fir and the legal points are

on the basis of the advice by my legal counsel and are believed to

be true and correct to my information, knowledge and belief.

Signed and verified at New Delhi on this day 22 day of May 2024.

Sd/- Piyush Gupta

Deponent”

8.9 The aforesaid evidence tendered by PW-1 by way of affidavit

went unrebutted as the respondent did not enter appearance or chose

or to lead evidence or cross examine PW-1.

RFA(COMM) 166/2025 Page 27 of 30

8.10 In that view of the matter, we are of the view of the learned

Commercial Court was in error in disbelieving the titular or

proprietorial right of the appellant over the asserted trade mark

DIAMOND.

9. Competence of Piyush Gupta to depose as PW-1

9.1 The next, and last, ground on which the learned Commercial

Court has held against the appellant is that Mr. Piyush Gupta, who had

testified as PW-1, was not competent to do so, as the facts of the case

were within the exclusive knowledge and domain of Mr. Rajesh

Gupta, who was the signatory to the plaint. The authorisation in

favour of Mr. Piyush Gupta, it is noted, was executed only on 5 July

2024. The learned Commercial Court has, therefore, expressed

surprise as to how Mr. Piyush Gupta could have deposed about the

facts which took place from 1975 onwards. The findings of the

learned Commercial Court in this regard read thus:

“Last but not least, AR of the Plaintiff, who had placed on record

the Board Resolution as well as SPA Ex. PWl/28 has failed to

explain as to how he had acquired the knowledge about the facts,

which were exclusively within the knowledge and domain of Sh.

Rajesh Gupta, who is signatory to the Plaint, especially when the

authorization in his favour was executed only on 05.07.2024, and

not on any date or occasion prior to that. It is also surprising as to

how he could have deposed about the events and facts, which had

taken place since the year 1975 onwards till the date of his

deposition.

*****

In view of my aforesaid discussion, I have no hesitation in holding

RFA(COMM) 166/2025 Page 28 of 30

that Plaintiff has miserably failed to substantiate its allegation as

levelled against the defendants entitling it to a decree of injunction

as prayed as the witness examined by it was not a competent

witness to depose about the facts, which were actually within the

exclusive knowledge and domain of Plaintiff alone.”

9.2 To support this finding, the learned Commercial Court has

placed reliance on the judgment of the Supreme Court in Janki

Vashdeo Bhojwani v lndusind Bank Ltd

13

9.3 Mr Bansal submits that the appellant was a juristic entity and

had, therefore, necessarily to be represented by a natural person.

Janki Vashdeo Bhojwani, as Mr. Bansal correctly points out, is a case

in which one natural person had given a power of attorney in respect

of another natural person to represent him in the proceedings. The

Supreme Court had held this to be impermissible.

9.4 In the present case, the power of attorney has been issued in

favour of the appellant-company Diamond Modular Pvt Ltd by Mr.

Piyush Gupta. Moreover, as Mr. Piyush Gupta has himself stated in

his affidavit in evidence and in the verification accompanying the said

affidavit, he has based his assertions in the affidavit on the basis of the

documents which were available. As such, his competence to depose

with respect to the facts in controversy cannot be discountenanced.

Mr. Bansal correctly submits that, in that view of the matter, it could

not be said that Mr. Piyush Gupta was an incompetent witness and

that, therefore, his testimony had to be disregarded.

13

(2005) 2 SCC 217

RFA(COMM) 166/2025 Page 29 of 30

9.5 Moreover, we have our reservations as to whether the learned

Commercial Court could have returned such a finding, especially

when the testimony of Mr. Piyush Gupta went uncontested in

evidence. It goes without saying that the Court cannot seek to make

out, in favour of a party, a case which the party has itself not chosen to

make out.

The Sequitur

10. We, therefore, are unable to sustain any of the grounds on

which the learned Commercial Court has held against the appellant.

11. Following our finding that there was deceptive similarity

between the asserted mark DIAMOND and the respondent’s mark

DIAMOND GOLD which was used for goods which were either

identical or at the very least similar, the appellant was clearly entitled

to a decree of injunction.

12. As such, there shall be a decree of permanent injunction

restraining the respondent as well as all others acting on behalf of the

respondent from using the mark DIAMOND GOLD or any other mark

which may be identical or deceptively similar to the registered word

mark DIAMOND, registered in favour of the appellant for any other

electrical goods or other goods which may be allied or cognate to the

goods in respect of which the mark DIAMOND stands registered in

favour of the appellant, including electric fans.

RFA(COMM) 166/2025 Page 30 of 30

13. The impugned order/judgment is accordingly quashed and set

aside.

14. CS (Comm) 444/2023 filed by the appellant before the learned

Commercial Court shall stand decreed in the aforesaid terms.

15. The Registry is directed to draw up a decree sheet accordingly.

16. The appeal is accordingly allowed.

17. Inasmuch the respondent has remained unrepresented, we

refrain from awarding any damages or costs.

C. HARI SHANKAR, J.

AJAY DIGPAUL, J.

MAY 5, 2025/dsn/an

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