The case of Diamond Modular Pvt. Ltd. v. Vikash Kumar & Anr. is a pivotal trademark infringement dispute adjudicated by the High Court of Delhi, addressing the protection of registered trademarks and the scope of deceptive similarity under the Trade Marks Act, 1999. The appellant, Diamond Modular Pvt. Ltd., alleged that the respondents’ use of the unregistered mark “DIAMOND GOLD” infringed its registered trademark “DIAMOND” for electrical goods, seeking a permanent injunction.

The Commercial Court dismissed the appellant’s suit, prompting an appeal before the High Court. The judgment, delivered on May 5, 2025, by Justices C. Hari Shankar and Ajay Digpaul, overturned the lower court’s decision, granting the injunction and reinforcing key principles of trademark law, including the irrelevance of identical goods for infringement and the evidential weight of uncontested trademark registrations. This case underscores the robust protections afforded to registered trademark proprietors and clarifies the application of Sections 28, 29, and 34 of the Trade Marks Act.

Detailed Factual Background

• Diamond Modular Pvt. Ltd., the appellant, claimed proprietary rights over the “DIAMOND” trademark, used since 1975 for electrical goods such as switches, plugs, sockets, lamp shade holders, and fans, registered under Classes 9 and 11 of the Trade Marks Act.
• The appellant’s registrations included:
  • Registration No. 426403 (Class 9, electric switches, plugs, sockets, since April 1, 1975, valid until August 28, 2025);
  • Registration No. 709611 (Class 9, electric switches, sockets, connectors, proposed use, valid until April 8, 2033);
  • Registration No. 831578 (Class 9, electrical accessories, since January 1, 1975, valid until December 10, 2028);
  • Registration No. 337296 (Class 11, lamp shade holders, since April 1, 1975, valid until June 8, 2026);
  • Registration No. 831577 (Class 11, electrical fans, coolers, geysers, since January 1, 1975, valid until December 10, 2028).
• The appellant, through its predecessor, Lalita Gupta, adopted the “DIAMOND” mark in 1975 under the proprietorship Diamond Products (India), later renamed New Diamond Electricals.
• In 1984, Rajesh Gupta, Lalita’s son, started Diamond Enterprises as a permissive user, acquiring the mark via an assignment deed dated October 19, 2001.
• The mark was further assigned to the appellant company, incorporated by Rajesh and Priti Gupta, on July 19, 2018.
• The appellant claimed a turnover of ₹23.7 crores in 2020–2021, asserting that “DIAMOND” was a well-known trademark and its logo an original artistic work under the Copyright Act, 1957.
• The appellant operated an interactive website, www.diamondindia.co.in.
• The respondents used the unregistered mark “DIAMOND GOLD” for electrical goods, including fans, wires, cables, switches, and heaters, applying for registration in Classes 9, 11, and 35 on July 1 and 4, 2022.
• The appellant opposed these applications, which remained pending.
• The respondents promoted their products through:
  • An interactive website: Google Sites
  • Social media platforms: Facebook, WhatsApp, YouTube
  • Email marketing
• The appellant alleged that “DIAMOND GOLD” was phonetically, visually, and structurally deceptively similar to “DIAMOND,” causing confusion and infringing its trademark rights.
• Evidence included:
  • Screenshots of the respondents’ online presence
  • A WhatsApp conversation showing delivery to a Delhi address
• The appellant claimed the respondents’ use was dishonest, aimed at exploiting its goodwill.

Detailed Procedural Background

• The appellant filed a suit, CS (Comm) 444/2023, before the District Judge (Commercial Court)-05, South, Saket, under Sections 134, 135, and 27(2) of the Trade Marks Act.
• Reliefs sought included:
  • Permanent injunction
  • Delivery-up
  • Rendition of accounts
  • Damages and costs
• Respondents did not appear despite summons; court proceeded ex parte on April 9, 2024.
• Appellant presented evidence through Piyush Gupta (PW-1), who submitted:
  • Affidavit detailing trademark’s history
  • Respondents’ infringing acts
  • Legal Proceedings Certificate (LPC) dated March 12, 2021
• The Commercial Court dismissed the suit on October 15, 2024, citing:
  • No infringement as “DIAMOND GOLD” was used for fans, not switches or LED lights
  • Section 34 requires continuous manufacture
  • Failure to prove assignment deeds from Lalita Gupta
  • Piyush Gupta deemed incompetent as a witness
• Aggrieved, the appellant filed RFA (COMM) 166/2025 before the Delhi High Court.

Issues Involved in the Case

• Whether “DIAMOND GOLD” infringes the registered “DIAMOND” trademark under Section 29, considering the difference in goods.
• Whether Section 34’s requirement of continuous manufacture was rightly applied.
• Whether the appellant’s failure to produce assignment deeds undermines its proprietorial rights.
• Whether Piyush Gupta was competent to testify as PW-1.
• Whether the appellant is entitled to a permanent injunction against “DIAMOND GOLD.”

Appellant’s Submissions (Diamond Modular Pvt. Ltd.)

• Contended that “DIAMOND GOLD” is deceptively similar to “DIAMOND” per Section 29(2)(a) and (b).
• Asserted that goods are allied/cognate—electrical goods often come from the same manufacturers.
• Emphasized registrations include fans and date back to 1975.
• Argued Section 34 irrelevant as it protects prior users; respondents’ use began in 2022.
• Acknowledged missing assignment deeds but relied on:
  • LPC documenting transfers (2001, 2018)
  • Section 31(1): registration is prima facie valid
• Defended Piyush Gupta’s testimony:
  • As company representative relying on records
  • Uncontested testimony
  • Distinguished from Janki Vashdeo Bhojwani, which involved natural persons

Respondents’ Submissions (Vikash Kumar & Anr.)

• No appearance or written statement from the respondents.
• Appellant’s evidence and submissions remained uncontested.
• Court proceeded ex parte and denied damages or costs due to non-participation.

Detailed Discussion on Judgments Cited by Parties
Janki Vashdeo Bhojwani v. Indusind Bank Ltd., (2005) 2 SCC 217: Cited by the Commercial Court to question Piyush Gupta’s competence, this Supreme Court case held that a power of attorney holder cannot depose on facts within the personal knowledge of another natural person. The High Court distinguished this, noting that the appellant, a juristic entity, required a natural person to represent it. Gupta’s affidavit relied on company records, not personal knowledge, and went uncontested, rendering the precedent inapplicable.

Detailed Reasoning and Analysis of Judge
Justices C. Hari Shankar and Ajay Digpaul systematically dismantled the Commercial Court’s findings, addressing each ground of dismissal. On infringement, the court held that the Commercial Court erred in requiring identical goods. Section 29(2)(a) and (b) defines infringement as the use of a similar mark for identical or similar goods, likely to cause confusion or association. Fans, switches, and LED lights, as electrical goods often produced by the same manufacturers, are “similar” or cognate.

The marks “DIAMOND” and “DIAMOND GOLD” were deceptively similar, sharing the dominant element “DIAMOND,” likely to confuse consumers of average intelligence. The appellant’s registrations, including for fans, and priority of use since 1975, reinforced its claim. The court clarified that actual use of the registered mark is not required for infringement under Section 28(1), and non-use only permits removal under Section 47, not denial of infringement relief.

On Section 34, the court found the Commercial Court’s reliance misplaced. Section 34 protects prior users of identical or similar marks, inapplicable here as the respondents’ use began in 2022, long after the appellant’s 1975 adoption and 1984 registration. The Commercial Court’s interpretation, requiring continuous manufacture, was unsupported by the provision’s text, reflecting a non-application of mind.

Regarding proprietorial rights, the court addressed the Commercial Court’s rejection due to unproduced assignment deeds. While the appellant did not file the 2001 and 2018 deeds, the LPC dated March 12, 2021, exhibited as PW1/11, documented the trademark’s transfer from Lalita Gupta to Rajesh Gupta (October 19, 2001) and to the appellant (July 19, 2018). Section 31(1) deems registration and assignments prima facie valid, and the uncontested LPC sufficed to prove proprietorship, especially absent respondent rebuttal.

On Piyush Gupta’s competence, the court rejected the Commercial Court’s skepticism. As a juristic entity, the appellant required a representative. Gupta’s affidavit, based on company records and verified on May 22, 2024, was uncontested, as the respondents neither appeared nor cross-examined. The Commercial Court’s reliance on Janki Vashdeo Bhojwani was erroneous, as it involved natural persons, not companies. The court further noted that courts cannot construct a case for a non-participating party, reinforcing the weight of Gupta’s unchallenged testimony.

Final Decision
The High Court quashed the Commercial Court’s judgment dated October 15, 2024, and decreed CS (Comm) 444/2023 in the appellant’s favor. A permanent injunction was granted, restraining the respondents and their agents from using “DIAMOND GOLD” or any mark identical or deceptively similar to “DIAMOND” for electrical goods or allied/cognate goods, including fans. No damages or costs were awarded due to the respondents’ absence. The Registry was directed to draw up a decree sheet, and the appeal was allowed.

Law Settled in This Case
The judgment clarifies several principles under the Trade Marks Act: Infringement under Section 29(2) does not require identical goods; similar or cognate goods (e.g., fans, switches) suffice if the marks are deceptively similar and likely to cause confusion. Section 34 is irrelevant unless the defendant proves prior use, inapplicable to late adopters.

Trademark Registration and assignments are prima facie valid under Section 31(1), and uncontested evidence, like an LPC, proves proprietorship without original deeds. A company’s representative can testify based on records, and uncontested testimony carries significant weight. Courts cannot construct defenses for non-appearing parties.

Diamond Modular Pvt. Ltd. Vs. Vikash Kumar & Anr.:May 5, 2025:RFA (COMM) 166/2025:2025:DHC:3619-DB:High Court of Delhi:Hon’ble Mr. Justice C. Hari Shankar, Hon’ble Mr. Justice Ajay Digpaul

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539