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Judgment
Tejas Karia, J
I.A. 9946/2024
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:
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;”
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:
S. No. | Trade Mark | Registration No. | Registration Date | Class | Renewed Up to |
| 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 |
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, Hyderabad | 2003 |
| 2. | Gurgaon Development Centre- Wipro Ltd | 2005 |
| 3. | Infinity Benchmark, Kolkata | 2009 |
| 4. | ITC Maurya, New Delhi | 2010 |
| 5. | Suzlon One Earth, Pune | 2010 |
| 6. | Grundfos Pump India Pvt. Ltd., Chennai | 2013 |
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.
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”).
The details of the Applications for the registration of the Defendant’s Marks are as under:
| S. No. | Trademark | Application Number | Date of Application | User claimed | Class |
| 1. | 4879685 | February 25, 2021 | Proposed to be used | 42 | |
| 2. | 4964897 | May 05, 2021 | Proposed to be used | 42 |
Aggrieved by the usage of the Defendant’s Marks by the Defendant for providing identical services, the present Suit has been filed by the Plaintiff.
PROCEDURAL BACKGROUND:
Vide order dated 27.09.2022, the Summons in the present Suit were issued and the Defendant was restrained from using the Mark ‘INTERNATIONAL GREEN BUILDING COUNCIL’ and / or ‘IGBC’ and the domain name, www.internationalgbc.org, and any other Trade Mark, which is identical or deceptively / confusingly similar to the Plaintiff’s Marks.
Vide order dated 23.11.2022, the learned Joint Registrar recorded that the Written Statement and the Affidavit of Admission/Denial were filed by the Defendant on 21.11.2022, however, the same were under objections. The Defendant was directed to remove the defects in accordance with law.
As the Defendant continued to operate the website ‘www.internationalgbc.org’ despite the injunction granted vide order dated 22.09.2022, the Plaintiff was constrained to file I.A. 18273/2022 under Order XXXIX Rule 2A of the CPC for willful disobedience of the order dated 22.09.2022. Vide order dated 20.12.2022, it was recorded that the learned Counsel for the Defendant had merely submitted that the Defendant had appealed against the order dated 27.09.2022, however, the Defendant was not able to dislodge the allegation of disobedience of the said order.
Vide order dated 21.12.2022, Notice was issued in I.A. 18273/2022 and the Defendant was directed to file its Reply within 10 days. Vide order dated 11.01.2023, the submission of learned Counsel for the Defendant was recorded that Reply to I.A. 18273/2022 as well as I.A. 15660/2022 were filed, however, the said Replies were not on record. Accordingly, the Defendant was directed to send a copy of the Replies through email to the learned Counsel for the Plaintiff during the course of the day and ensure that the Replies are on record before the next date of hearing.
Vide order dated 21.02.2023, pursuant to the undertaking given by the learned Counsel for the Defendant to remove the objections and refile the Reply to I.A. 18273/2022, the permission was granted to place the Reply on record within 3 days.
Vide order dated 11.12.2023, it was recorded that despite grant of extension of 3 days on 21.02.2023, the Reply to I.A. 18273/2022 continued to remain under objections. Accordingly, the right of the Defendant to file a Reply to I.A. 18273/2022 was closed and the Managing Director of the Defendant, Mr. Mukesh Singh, was directed to remain personally present before the Court on 04.01.2024.
Vide order dated 04.01.2024, it was recorded that Mr. Mukesh Singh apprised that he has complied with the order dated 27.09.2022 and the website ‘www.internationalgbc.org’ was not operational anymore and that he was no more operating under the Mark ‘INTERNATIONAL GREEN BUILDING COUNCIL’ and / or ‘IGBC’. It was further recorded that the Plaintiff has asserted that a company has been incorporated on 26.06.2023 by using the name, International Green Building Council, to which Mr. Mukesh Singh submitted that the process of applying for incorporation had commenced before the order dated 27.09.2022 was passed and undertook that he would not activate the said company and / or commence any operation under its aegis or use the company’s name in any manner during the pendency of the present Suit in compliance with the order dated 27.09.2022. It was further directed that the Defendant shall take steps to file an Affidavit in consonance with the undertaking given by Mr. Mukesh Singh before the Court, within the next week with a copy to be served to the learned Counsel for the Plaintiff.
Another Application being I.A. 174/2023 was filed by the Plaintiff under Order XXXIX Rule 2A of the CPC seeking directions for compliance of order dated 27.09.2022, claiming that subsequent to the said order, the Defendant has continued to use the infringing Marks on its IndiaMart, Instagram, Facebook and YouTube pages. Vide order dated 04.01.2024, Notice was issued in the said Application, and the Defendant was directed to file the Reply within four weeks with an advance copy to be served to the learned Counsel for the Plaintiff.
Vide order dated 22.02.2024, it was recorded that a direction was passed for the Defendant to take steps for filing the Affidavit related to the undertaking given by Mr. Mukesh Singh within a period of one week, however, the same had not been filed. It was further recorded that the Reply to I.A. 174/2023 had also not been filed in time. It was observed that non-compliance of the orders may invite strictures as well as exemplary costs and damages.
Thereafter, vide order dated 03.05.2024, it was recorded that the Defendant had entered appearance through Counsel on 23.11.2022 and had stated that the Written Statement had been filed, however, the same was under objections. Further, vide the said order Notice was issued in the present Application filed under Order VIII Rules 1 and 10 of the CPC for securing a judgment in favour of the Plaintiff and against the Defendant in terms of the prayer sought in Paragraph No. 38 of the Plaint.
Vide order dated 11.09.2024, the Parties were directed to make an attempt to amicably resolve their differences. It was further directed that the Defendant shall file the Affidavit in terms of the direction issued vide order dated 02.04.2024. Vide order dated 27.11.2024, it was again directed that an Affidavit shall be filed by the Defendant in terms of the order dated 02.04.2024 and that the needful shall be done before the next date of hearing.
Vide order dated 12.03.2025, it was recorded that a Special Leave Petition has been filed before the Supreme Court by the Defendant, which was likely to be listed shortly. It was further noted that no Written Statement on behalf of the Defendant was on record despite the fact that the Suit was filed in the year 2022.
Vide order dated 07.05.2025, it was recorded that the learned Counsel for the Defendant once again sought adjournment on the ground that a Special Leave Petition had been filed before the Supreme Court on 07.03.2025, however, the same was still pending under defects. It was also noted that the learned Counsel for the Defendant had contended the same on the last date of hearing and the Defendant had not filed any Reply till date to the present Application despite the issuance of Notice on 03.05.2024.
Accordingly, it was observed that the overall conduct of the Defendant reflected that it was merely trying to adopt dilatory tactics to derail this Court from proceeding further and, therefore, granted adjournment subject to costs of ₹50,000/- payable within a period of two weeks. Further, the Defendant was granted one last opportunity to file an Affidavit in terms of the order dated 02.04.2024 within a period of two weeks, failing which the said Affidavit shall only be taken on record subject to further costs of ₹50,000/-.
Thereafter, the arguments were heard on this Application on 05.08.2025 and both Parties were directed to file their respective Written Submissions. On 25.08.2025, additional time was granted to file Written Submissions. The Plaintiff has filed the Written Submissions, however despite the opportunity being granted, the Defendant has not filed its Written Submissions. Accordingly, the order was reserved in this Application vide order dated 04.11.2025.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF:
The learned Counsel for the Plaintiff submitted that:
The Defendant’s Marks are deceptively similar to the Plaintiff’s Marks, which is clearly depicted in the table as under:
| PLAINTIFF | DEFENDANT | ||
|---|---|---|---|
| Essential Features: - A smaller circle enclosed in a big circle. - The dominant and prominent part of the Plaintiff’s logo mark in its famous three oak leaves in the centre, in the smaller circle, along with the word mark USGBC and ‘US GREEN BUILDING COUNCIL’ written inside the boundary of the outer circle. | |||
Any use and / or registration of the Defendant’s Mark in relation to identical services is likely to cause confusion on the part of general public who would associate Defendant’s Mark with the Plaintiff and the services under Defendant’s Mark will be taken to be originating from the Plaintiff.
The likelihood of confusion between the competing Marks is further aggravated due to overlapping consumer base. For instance, both the Plaintiff and the Defendant have offered certification services to Indian Railways.
The Defendant had copied content from Plaintiff’s website, which constitutes original literary work under the Copyright Act, 1957. The competing content of the Plaintiff’s website and the Defendant’s website is detailed below:
Plaintiff’s content as available on https://www.usgbc.org/help/whyleed | Defendant’s content as available on https://internationalgbc.org/credentials/ |
|---|---|
| LEED (Leadership in Energy and Environmental Design) is the most widely used green building rating system in the world. Available for virtually all building types, LEED provides a framework for healthy, highly efficient, and cost-saving green buildings. LEED certification is a globally recognized symbol of sustainability achievement and leadership. | International Green Building Council (IGBC) International GBC (IGBC, is the most widely used green building rating system in the world. Available for virtually all building, community and home project types, International GBC (IGBC provides a framework to create healthy, highly efficient and cost-saving green buildings. International GBC (IGBC) certification is a worldwide recognized symbol of sustainability development. |
The Defendant has failed to diligently defend the present Suit and has constantly employed dilatory tactics to derail the proceedings in the present Suit. Despite repeated directions from this Court for taking appropriate steps to bring the Written Statement and / or Replies to various Applications in the proceedings on record, the Defendant has still not placed any pleading on record.
Consequent to such dilatory tactics adopted by the Defendant, the Plaintiff has filed the present Application seeking pronouncement of Judgment in the present Suit on account of the Defendant’s failure to bring its Written Statement on record within the period of 120 days. As the Court’s Summons were duly served on 15.10.2022, the period of 120 days for filing the Written Statement had lapsed on 14.02.2023.
In I.A. 9580/2024 filed by the Defendant, the Defendant failed to state any cogent reason for permitting the Written Statement to be taken on record. Accordingly, this Court is empowered to pronounce Judgment in terms of Order VIII Rules 1 and 10 of the CPC.
In view of the above, it is prayed that the present Application be allowed.
SUBMISSIONS ON BEHALF OF THE DEFENDANT:
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.
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:
Heard the learned Counsel for the Parties and perused the material placed on record.
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.
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.
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.
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:
“11.Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents….”
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.
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.
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
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’.
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.
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.
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.
Accordingly, the present Application is allowed.
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.
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.
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.
Let the decree sheet be drawn up accordingly.
The present Suit and all the pending applications stand disposed of.