Full Text
HIGH COURT OF DELHI
JUDGMENT
174/2024, I.A. 4214/2024, I.A. 9580/2024 & I.A. 20660/2025
U.S. GREEN BUILDING COUNCIL .....Plaintiff
Advocates who appeared in this case For the Plaintiff : Mr. Anirudh Bakhru, Mr. Rahul Chaudhry, Ms. Ekta Sarin, Mr. Ayush Samaddar and
Ms. Ishita Maheshwari, Advocates.
For the Defendant : Mr. Piyush Kumar, Advocate.
1. The present Application has been filed by the Plaintiff under Order VIII Rules 1 and 10 read with Section 151 of the Code of Civil Procedure, 1908 (“CPC”) for pronouncement of Judgment in favour of the Plaintiff and against the Defendant.
FACTUAL BACKGROUND:
2. This Suit has been filed by the Plaintiff against the Defendant for infringement of Trade Marks and Copyright as well as passing off the services of the Defendant as those of the Plaintiff seeking following relief: “(i) A decree of permanent injunction against the Defendant from using the marks,, the abbreviation IGBC and/or any other mark similar to the Plaintiff's USGBC Marks, either by itself or in conjunction with any other trademark as a trademark in relation to its services and/ or goods or in any manner whatsoever including but not limited to use as a trade name or part of a trade name, domain name or part of a domain name so as to infringe the Plaintiff's registered USGBC Marks or pass off their services as and for the services of the Plaintiff;
(ii) A decree of permanent injunction against the Defendant from using the content of _the Plaintiff's website that are owned by the Plaintiff and/or any other image / content so as to infringe the Plaintiffs copyright in its original literary work;
(iii) An order to deliver to the Plaintiff's attorneys and/or its representatives for destruction, all products, labels, stickers, moulds, signs, stationery, business cards, prints, packages, plates, dyes, wrappers, receptacles, materials and advertisements in their possession or under their control, bearing the marks,, the abbreviation IGBC and/or any other mark similar to the Plaintiff's USGBC Marks;
(iv) An order directing the Defendant to render true and proper accounts of the profits made by them by use of the marks,, the abbreviation IGBC for the services provided by them or use of any trademark similar to the Plaintiff’s USGBC Marks in relation to its business and a decree be passed in favour of the Plaintiff or the amount thus found due;
(v) The decree of injunction as granted be binding upon the
Defendant, its directors, as the case may be, its principal officers, servants, agents and/ or all others acting for and on its behalf;
(vi) Costs of the suit be awarded to the Plaintiff;”
3. The Plaintiff is engaged in the business of offering certification, in particular, green ratings to real estate projects / building. The Plaintiff has secured Trade Mark registrations for multiple ‘USGBC’ Marks. An indicative list of the Marks (“Plaintiff’s Marks”) is as under:
1. 1238730 22/09/2023 41, 42 22/09/2033
2. 1970150 24/05/2010 41 24/05/2030
3. 2631029 21/11/2013 41 21/11/2033
4. 2631030 21/11/2013 42 21/11/2033
4. The Plaintiff has certified multiple projects in India. An indicative list of the certifications granted by the Plaintiff is as under:
┌──────────────────────────────────────────────────────────────────────────────────────────────────────────────────┐ │ Sl. No. Particulars of Construction Year of Certification │ ├──────────────────────────────────────────────────────────────────────────────────────────────────────────────────┤ │ 1. CII – Sohrabji Godrej Green, 2003 │ │ Hyderabad │ │ 2. Gurgaon Development Centre- 2005 │ │ Wipro Ltd │ │ 3. Infinity Benchmark, Kolkata 2009 │ │ 4. ITC Maurya, New Delhi 2010 │ │ 5. Suzlon One Earth, Pune 2010 │ │ 6. Grundfos Pump India Pvt. Ltd., 2013 │ │ Chennai │ │ Signature Not Verified CS(COMM) 664/2022 Page 4 of 17 │ │ Signed By:NEELAM │ │ SHARMA │ │ 5. In 1996, the Plaintiff registered its domain name www.usgbc.org │ │ (“Plaintiff’s Website”) through which the Plaintiff disseminates the │ │ information about itself to the public at large. Further, the Plaintiff has been │ │ promoting its services through various print and electronic mediums │ │ including its social media pages on Twitter, LinkedIn and Facebook, where │ │ it has significant following. │ │ 6. The Defendant is engaged in identical services as that of the Plaintiff │ │ of green building certification and have adopted the following Marks: │ │ ‘ ’ and ‘ ’ (“Defendant’s Marks”). │ │ 7. The details of the Applications for the registration of the Defendant’s │ │ Marks are as under: │ └──────────────────────────────────────────────────────────────────────────────────────────────────────────────────┘
25. In view of the above, it is prayed that the present Application be allowed.
SUBMISSIONS ON BEHALF OF THE DEFENDANT:
26. The learned Counsel for the Defendant submitted that the Defendant has made significant efforts to resolve this dispute amicably and that it does not want to contest the present Suit due to some personal constraints. It is further submitted that the Defendant has stopped using the Defendant’s Marks and website ‘www.internationalgbc.org’ in accordance with the order dated 27.09.2022.
27. The learned Counsel for the Defendant submitted that the Defendant is still in the process of gathering some documents necessary for the adjudication of the present Suit and seeks some time to take the necessary steps to place its Written Statement on record.
ANALYSIS AND FINDINGS:
28. Heard the learned Counsel for the Parties and perused the material placed on record.
29. It is a matter of record that despite sufficient opportunities being granted, the Defendant has failed to file the Written Statement or Reply to this Application. It is evident from the record that the objections to the Written Statement filed by the Defendant were raised on 23.11.2022. However, the Defendant failed to take appropriate steps to remove the defects and the Written Statement continued to remain under objections. Therefore, the averments made in the Plaint filed by the Plaintiff stand unrebutted and are deemed to have been admitted.
30. It is clear from the procedural background above that the Defendant has failed to take any steps to place the Written Statement within the prescribed timeframe on record and has adopted a complete lackadaisical approach in complying with multiple directions for filing any pleadings including the Reply and Written Submissions in this Application despite sufficient opportunities and time being granted for the same.
31. The Defendant has clearly employed dilatory tactics and adopted casual approach by failing to comply with any direction passed in this matter. The Defendant’s conduct does not inspire any confidence.
32. The Court’s powers to pronounce a judgment under Order VIII Rule 10 of the CPC is explained by this Court in Nirog Pharma Pvt. Ltd. v. Umesh Gupta, 2016 SCC OnLine Del 5961, and the relevant extract from the said decision is as under:
33. In view of the above, this is a fit case for exercising jurisdiction under Order VIII Rule 10 of the CPC. The Plaintiff has been able to establish that the Plaintiff is the registered proprietor of the Plaintiff’s Marks. Due to the extensive use of the Plaintiff’s Marks, the Plaintiff has been able to establish that significant goodwill and reputation is attached with the Plaintiff’s Marks.
34. A comparison of the Plaintiff’s Marks with the Defendant’s Marks reveals that the dominant features of the Plaintiff’s Marks are closely imitated in the Defendant’s Marks, including the shape and overall stylization of the competing Marks in addition to the placement of the oak tree in the center. Further, the contents of the Defendant’s website ‘www.internationalgbc.org’ were significantly copied from the contents of the Plaintiff’s website ‘www.usgbc.org’. In view thereof, a clear case of Trade Mark and Copyright infringement is made out against the Defendant.
35. It is also clear that the Defendant attempted to ride on the goodwill and reputation amassed by the Plaintiff. There exists a strong likelihood that the unwary consumers will be duped into opting for Defendant’s service believing that it emerges from the Plaintiff or associating it with the Plaintiff. Therefore, a clear case of infringement and passing off of the Plaintiff’s Mark is made out against the Defendant
36. Vide order dated 04.01.2024, the undertaking of Mr. Mukesh Kumar, the Managing Director of the Defendant, was recorded that the website ‘www.internationalgbc.org’ is no longer operational and that Defendant is not operating under the Trade Mark ‘International Green Building Council’ and / or ‘IGBC’.
37. In the Compliance Affidavit dated 09.02.2024 filed pursuant to order dated 04.01.2024, Mr. Mukesh Kumar has reiterated that the Defendant no longer operates the website ‘www.internationalgbc.org’ and that no certificate under the Trade Mark ‘International Green Building Council’ has been issued by the Defendant.
38. As the Defendant has already stopped using the Defendant’s Marks and its website and has given an undertaking before this Court, and in view of the finding that there is clear infringement and passing off of the Plaintiff’s Marks, permanent injunction deserves to be granted against the Defendant as prayed for this Suit.
39. As regards the damages, given the conduct of the Defendant in the present proceedings of disobedience of the orders by flouting multiple directions despite repeated warnings and adopting dilatory tactics, it is necessary to impose exemplary damages on the Defendant. It is also necessary to award the actual costs to the Plaintiff for these proceedings.
40. Accordingly, the present Application is allowed.
41. In view of the order passed in I.A. 9946/2024, the present Suit is decreed against the Defendant in terms of Paragraph No. 38(i) to (v) of the Plaint. The Defendant is directed to pay an amount of ₹10,00,000/- (Rupees Ten Lakh Only) to the Plaintiff towards exemplary damages on account of loss suffered by the Plaintiff, which is quantified taking into consideration the infringing activities of the Defendant because of which the Plaintiff had to file the present Suit including multiple Application for contempt and pronouncement of the Judgement, and the conduct of the Defendant involving willful disobedience of the directions passed by this Court and dilatory tactics adopted by the Defendant throughout these proceedings.
42. The Plaintiff is also entitled to actual costs, in terms of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018, read with Delhi High Court Intellectual Property Rights Division Rules, 2022 recoverable from the Defendant. Plaintiff shall file its Bill of Costs in a sealed cover in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018, within a period of four weeks.
43. Once the Bill of Costs is filed, the matter shall be listed before the learned Joint Registrar (Judicial) in capacity as the Taxing Officer for the computation of costs.
44. Let the decree sheet be drawn up accordingly.
45. The present Suit and all the pending applications stand disposed of.
TEJAS KARIA, J DECEMBER 24, 2025 ST/AP