Introduction
This judgment from the Delhi High Court delves into a classic trademark infringement and passing off dispute centered on the mark “Athermal,” used in connection with welding safety glasses and related apparatus, highlighting the tensions between prior use and statutory registration under the Trade Marks Act, 1999.
Parties to the Dispute
The appellant, Amit Bansal, operating as M/s Ambay Industrial Corporation, challenged the trial court’s interim injunction favoring the respondents, Amit Garg and his associated entity, restraining the appellant from using the mark during the pendency of the suit.
Key Legal Issues
- Doctrine of prior user superiority
- Inapplicability of approbate and reprobate in certain contexts
- Scrutiny of user claims through predecessors
- Allegations of fabricated evidence
- Impact of positions taken before the Trade Marks Registry
Court Observations and Findings
The case underscores the doctrine of prior user superiority, the inapplicability of approbate and reprobate in certain contexts, and the necessity for courts to scrutinize user claims through predecessors equitably, without disparate treatment.
It also examines allegations of fabricated evidence and the impact of positions taken before the Trade Marks Registry, ultimately reversing the trial court’s order by recognizing the appellant’s prima facie prior use dating back to 1990 through familial business continuity, while dismissing the respondents’ claims based on inconsistencies and later adoption in 2003.
Legal Significance of the Decision
This decision reinforces that registration does not trump established prior use and cautions against selective acceptance of oral family settlements without corresponding scrutiny of similar predecessor claims, setting a precedent for balanced interim relief in trademark litigation.
Factual Background
The respondents initiated the suit claiming exclusive rights to the mark “Athermal” for manufacturing and marketing welding apparatus, cables, regulators, transformers, machines, tools, and particularly safety glasses, asserting that the appellant illegally imitated it, leading to infringement and passing off.
Respondents’ Claim of Origin
Respondent No. 1, Amit Garg, trading as M/s Athermal Industries AG, maintained that the mark was honestly coined and adopted in 2003 by his predecessor, Respondent No. 2, a proprietorship concern run by family members, specifically his mother under M/s Shiva Traders, with rights transferred via an oral family settlement.
Respondents’ Registration History
They filed for registration on 25.03.2010 under Application No. 1941345 in Class 9, securing certificate No. 1692988 on 01.11.2017 with a claimed user date of 18.04.2005.
| Application No. | Year | Remarks |
|---|---|---|
| 1941345 | 2010 | Class 9, certificate issued in 2017 |
| 2207990 | 2011 | Subsequent application |
| 2277143 | 2012 | Subsequent application |
| 2277118 | 2012 | Subsequent application |
| 2543087 | 2013 | Subsequent application |
Some of these applications cited the appellant’s marks as conflicting, prompting responses from respondents asserting dissimilarity to overcome objections.
Appellant’s Claim of Origin
The appellant, in his written statement and counterclaim, contended that the mark “Athermal” was adopted and used since 1985 by his father, Rajinder Kumar Bansal, trading as M/s Ambay Traders and Manufacturers from the same premises.
The appellant continued independently from 2006 under M/s Ambay Industrial Corporation with his father’s permission, raising invoices accordingly.
Appellant’s Registration History
- Applied in 2011 under No. 2135186 (Class 9)
- Applied in 2011 under No. 2135185 (Class 7)
The initial user date was claimed as 01.04.2006, later seeking amendment to 01.04.1985 post-opposition by respondents.
Allegations of Fabrication
Both parties accused each other of fabricating invoices:
- Respondents produced five invoices from 2003–2011, which the appellant claimed were forged, supported by telephonic confirmations and a police complaint.
- The appellant’s invoices from 1990–1999 were labeled fabricated by respondents, noting abandonment post-1999 and lack of formal assignment.
The dispute escalated with mutual interim applications under Order XXXIX Rules 1 & 2 CPC, leading to the trial court’s favoritism toward respondents based on registration and perceived prior use.
Procedural Background
The respondents filed the suit in 2018 before the Additional District Judge, Rohini Courts, Delhi, seeking permanent injunction against infringement and passing off, accompanied by an interim application under Order XXXIX Rules 1 & 2 CPC.
The appellant filed a written statement cum counterclaim denying claims and asserting prior use, along with his own interim application for restraint against respondents.
Trial Court Order
On 05.01.2019, the trial court allowed the respondents’ application, restraining the appellant from using “Athermal” or similar marks, while dismissing the appellant’s application, citing:
- Respondents’ registration
- Adoption in 2003
- Appellant’s independent start in 2006 without proof of assignment
High Court Proceedings
Aggrieved, the appellant appealed under Order XLIII Rule 1 read with Section 151 CPC. Notice was issued on 25.01.2019.
On 08.02.2019, the High Court stayed the impugned order, observing disparate treatment of predecessor user claims.
Interim Observations
- On 09.12.2022, the mark was deemed prima facie descriptive for welding glasses implying heat resistance.
- On 06.07.2023, respondents’ admissions of dissimilarity in registry replies were noted as potentially impactful per Raman Kwatra v. KEI Industries Ltd., with stay continued.
Reasoning and Decision of Court
The court meticulously analyzed the core issues of prior use, registration validity, and applicability of approbate and reprobate, beginning with the latter by referencing Raman Kwatra, where a party securing registration by asserting dissimilarity cannot later seek injunction claiming similarity.
However, it distinguished the case, noting that while respondents repeatedly claimed dissimilarity in replies to examination reports citing appellant’s marks for their secondary applications, the primary registered mark (No. 1941345) was not objected on that basis, thus no approbate/reprobate arose for the suit’s foundation, as no registration was obtained on such assertions for that mark.
Prior Use Analysis
Shifting to prior use, the court emphasized its superiority over registration, scrutinizing claims:
- Appellant’s invoices from 1990 under father’s firm.
- Shared premises.
- Familial relation establishing prima facie continuity since 1985.
The court rejected the trial court’s dismissal for lack of formal assignment without similar scrutiny of respondents’ oral family settlement with mother-run entity, which lacked her verification in the plaint.
Disparate Treatment by Trial Court
The court deemed trial court’s treatment disparate, accepting respondents’ 2003 user while ignoring appellant’s earlier evidence, and dismissed fabrication allegations as trial matters, finding no prima facie proof on record.
Interim Relief and Injunction
Balancing equities, irreparable harm, and convenience, the court held appellant’s prior use since 1990 trumped respondents’ 2003 claim and 2017 registration, setting aside the impugned order, rejecting respondents’ interim application, and allowing appellant’s, restraining respondents from using “Athermal” or similar marks for specified goods pendente lite.
It clarified that observations were interim without prejudicing trial merits.
Point of Law Settled in the Case
The judgment solidifies that prior continuous use of a trademark through a predecessor-in-title, evidenced by invoices and familial business continuity from a shared premises, establishes superior rights over subsequent registration, even without formal assignment deeds, provided claims are not disparately scrutinized compared to similar oral settlements claimed by opponents.
It clarifies that the doctrine of approbate and reprobate bars interim relief only where registration is secured by asserting dissimilarity to a cited mark, not extending to suits based on registrations untainted by such assertions, despite similar positions in collateral applications.
The ruling mandates equitable evaluation of predecessor user claims at interim stages, rejecting selective acceptance without verification, and underscores that fabrication allegations require trial adjudication, not preempting prima facie prior use findings, thereby prioritizing user evidence over registration in balancing interim injunction factors.
Case Details
| Case Title | Amit Bansal Vs. Amit Garg & Anr. |
|---|---|
| Date of Order | 31.01.2026 |
| Case Number | FAO-IPD 37/2021 |
| Neutral Citation | 2026:DHC:798 |
| Name of Court | High Court of Delhi at New Delhi |
| Name of Hon’ble Judge | Hon’ble Mr. Justice Tejas Karia |
