Amit Bansal v. Amit Garg & Anr.

High Court of Delhi | 31 January 2026 Case Number: FAO-IPD 37/2021 Bench: Hon’ble Mr. Justice Tejas Karia Citation: Citation to be verified

BACKGROUND

The present appeal was filed by the appellant, Amit Bansal, under Order XLIII Rule 1 read with Section 151 of the Code of Civil Procedure, 1908 (“CPC”), challenging the order dated 05.01.2019 (“the impugned order”) passed by the learned Additional District Judge-04, North West, Rohini Courts, Delhi (“the Trial Court”) in CS No. 1/2018 (“the Suit”). By the impugned order, the Trial Court had allowed the application of the respondents under Order XXXIX Rules 1 and 2 of the CPC, granting an interim injunction restraining the appellant from using the trademark “ATHERMAL” or any other deceptively similar mark during the pendency of the Suit, while simultaneously dismissing the appellant’s corresponding application under Order XXXIX Rules 1 and 2 of the CPC.

The respondents had instituted the Suit before the Trial Court, inter alia, seeking a permanent injunction restraining infringement and passing off of the mark (the “Subject Mark”), alleging that the appellant had illegally imitated the Subject Mark by using the mark “ATHERMAL.” The plaint claimed that Respondent No. 1, Mr. Amit Garg, carried on business as M/s Athermal Industries AG, manufacturing and marketing a range of associated goods and that Respondent No. 2 was a proprietorship concern of Mr. Amit Garg’s family members selling the same range of goods under the Subject Mark. The respondents claimed that the Subject Mark was honestly coined and adopted by Mr. Amit Garg, trading as M/s Athermal Industries AG, through his predecessor, in the year 2003. An application for registration of the Subject Mark was filed on 25.03.2010 before the Trade Marks Registry, bearing Application No. 1941345 in Class 9 and the Subject Mark was registered vide Certificate No. 1692988 dated 01.11.2017.

In the written statement/counter-claim filed before the Trial Court, the appellant claimed that he had been using the mark “ATHERMAL” through his predecessor-in-title, Mr. Rajinder Kumar Bansal, trading as M/s Ambay Traders and Manufacturers, since the year 1985, with Mr. Rajinder Kumar Bansal the appellant’s father operating his business from the same address as the appellant. The appellant asserted that he had commenced his own business independently in 2006 under the mark “ATHERMAL,” trading as M/s Ambay Industrial Corporation, with the permission of his father, continuing the family business at the same use of the mark.

Both parties filed applications under Order XXXIX Rules 1 and 2 of the CPC before the Trial Court, each seeking an interim injunction restraining the other from using the mark “ATHERMAL.” By the impugned order, the Trial Court allowed the respondents’ application and dismissed the appellant’s application, thereby restraining the appellant from using the mark.

Notice was issued in the present appeal on 25.01.2019 and by order dated 08.02.2019, this Court stayed the impugned order, observing that the Trial Court had accepted the respondents’ averment that the Subject Mark was coined and adopted by Respondent No. 1’s predecessor in 2003, while rejecting the appellant’s similar contention that his predecessor had coined and adopted “ATHERMAL” in 1985. By order dated 09.12.2022, this Court observed that the mark “ATHERMAL,” when used in relation to welding glasses, signifies that the product does not absorb heat or remains unchanged despite temperature fluctuation and is therefore prima facie descriptive in nature. By order dated 06.07.2023, this Court observed that when the appellant’s earlier trademark applications had been cited as conflicting marks against the respondents’ applications, the respondents had taken the position before the Trade Marks Registry that the two marks were different and that, in view of this Court’s decision in Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38, this admission could impact the respondents’ case. The stay granted on 08.02.2019 was directed to continue during the pendency of the appeal. The parties advanced final submissions on 15.09.2025, 14.10.2025 and 18.11.2025 and judgment was reserved on 18.11.2025.

The appellant’s case, in summary, traced a chain of prior use through his father’s firm invoices establishing use of “ATHERMAL” for welding glasses by M/s Ambay Traders and Manufacturers dating back to 1990 were placed on record and contended that the respondents’ business came into existence only in October 2011 per the respondents’ own documents, such that Respondent No. 1 could not have used the Subject Mark prior to that date, notwithstanding the claimed 2003 adoption date. The appellant pointed to a complex web of trademark prosecution history: the appellant had applied for registration of “ATHERMAL” under Application Nos. 2135186 (Class 9) and 2135185 (Class 7) on 26.04.2011, both of which remained pending; Respondent No. 2 had filed Application No. 2207990 (Class 9) on 20.09.2011 for the Subject Mark; Respondent No. 1 had filed Application Nos. 2277143 (Class 9) and 2277118 (Class 7) on 03.02.2012 for the Subject Mark; and Respondent No. 1 had filed Application No. 2543087 (Class 7) on 04.06.2013, this time directly for the word mark “ATHERMAL.” Critically, in responding to multiple examination reports issued by the Trade Marks Registry in which the appellant’s pending applications for “ATHERMAL” had been cited as conflicting prior marks against several of the respondents’ applications Respondent No. 1 had, on five separate occasions between 2015 and 2018, expressly represented to the Registry that the appellant’s mark “ATHERMAL” was visually, phonetically, and/or structurally different from the respondents’ marks and that there was no likelihood of confusion between them. The appellant contended that these repeated admissions estopped the respondents from taking a contrary position in the Suit, relying on this Court’s decision in Raman Kwatra (supra). The appellant also alleged that only five invoices had been produced by the respondents to establish use of the Subject Mark from 2003 to 2011, that these invoices were illegible, forged and fabricated and supported this allegation with a recorded telephonic conversation with the proprietors of one of the firms said to have issued an invoice, as well as a police complaint dated 20.01.2018 filed at Hauz Qazi Police Station by one of the purported invoice recipients.

The respondents’ case, in summary, was that Respondent No. 1 had commenced business through his predecessor, Respondent No. 2 (M/s Shiva Traders, proprietored by Ms. Asha Rani, Respondent No. 1’s mother), in 2003 under the Subject Mark, having acquired exclusive rights through an “Oral Family Settlement,” and that the Subject Mark had since become exclusively associated with the respondents. The respondents contended that the appellant’s claimed 1985 user date through his father was unsubstantiated, since the firm M/s Ambay Traders and Manufacturers did not belong to the appellant by any assignment deed and Mr. Rajinder Kumar Bansal had not been impleaded as a party. The respondents pointed out that their first registration application (No. 1941345, Class 9) carried a user date of 18.04.2005, predating the appellant’s applications (Nos. 2135186 and 2135185), which carried a user date of only 01.04.2006 and that the appellant had sought to amend this claimed user date to 01.04.1985 only on 06.09.2018, six years after filing and only after the respondent had opposed the appellant’s applications and filed the Suit. The respondents argued that the principle in Raman Kwatra was inapplicable because that decision concerned a party that had obtained registration on the basis of an assertion of dissimilarity, whereas the appellant’s applications (cited as conflicting marks against the respondents’) remained unregistered and pending before the Registry. The respondents also contended that the appellant’s invoices, purportedly showing use from 1990 to 1999, were themselves fabricated and that, in any event, no evidence of use after 1999 had been shown, such that any such use stood abandoned.

ISSUES FOR DETERMINATION

• Whether the principle of approbate and reprobate, as articulated by this Court in Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38 namely, that a party which has obtained trademark registration on the basis of an assertion of dissimilarity from a cited mark cannot subsequently seek an interim injunction against the proprietor of that cited mark on the ground of deceptive similarity applied to the facts of the present case, given that the respondents had repeatedly represented to the Trade Marks Registry, in responses to multiple examination reports, that the appellant’s mark “ATHERMAL” was dissimilar to various marks sought to be registered by the respondents, while the respondents’ registered Subject Mark (Application No. 1941345) itself had never been the subject of any such citation or representation.
• Which of the two parties the appellant, through his claimed predecessor-in-title Mr. Rajinder Kumar Bansal (since 1985, or, as evidenced by invoices, at least since 1990) or Respondent No. 1, through his claimed predecessor Respondent No. 2 pursuant to an alleged “Oral Family Settlement” (since 2003) was the prior user of the mark “ATHERMAL”/the Subject Mark and what legal consequence followed from this determination, particularly in light of the well-established principle that the rights of a prior user of a trademark are superior to those of a mere registrant.
• Whether the invoices relied upon by either party to establish their respective claims of prior use were prima facie credible or whether the allegations of fabrication levelled by each side against the other’s invoices were sufficiently substantiated to be resolved at the interlocutory stage or whether such determination required to await trial.
• Whether the Trial Court had correctly applied the foregoing principles in arriving at its conclusion specifically, whether the Trial Court had erred in accepting the respondents’ claim of user since 2003 (based on an oral family settlement, with the plaint not even signed or verified by Respondent No. 2) while rejecting the appellant’s parallel claim of user since 1985/1990 (based on a similar claim of succession from a family predecessor) on the differential ground that the appellant had not demonstrated a formal assignment, without subjecting the respondents’ claim to the same scrutiny.

KEY HOLDINGS OF THE COURT

1. On the applicability of the principle in Raman Kwatra, the Court held, after a close and tabulated examination of the prosecution history, that the principle did not apply to disentitle the respondents from seeking relief in respect of the Subject Mark specifically. The Court reasoned that while the appellant’s mark “ATHERMAL” had indeed been cited by the Trade Marks Registry as a conflicting prior mark against several other applications filed by the respondents (Application Nos. 2543087, 2277118, 2207990 and 2277143) and the respondents had, in response to each of these citations, expressly represented that the appellant’s mark was visually, phonetically, and/or structurally dissimilar with no likelihood of confusion, the appellant’s mark “ATHERMAL” had never been cited against, nor had any representation of dissimilarity been made by the respondents in connection with, the specific Subject Mark application (Application No. 1941345 in Class 9) upon which the Suit and the interim injunction sought by the respondents were founded. The Court held that since the doctrine of approbate and reprobate operates to prevent a party from contradicting a representation made in connection with the very registration relied upon for relief and since no such representation had been made in respect of the Subject Mark itself, the respondents could not be said to have approbated and reprobated merely because they had made representations regarding the appellant’s mark in connection with other, separate applications. The Court expressly rejected the respondents’ alternative argument that the principle in Raman Kwatra was inapplicable because the appellant’s cited applications remained unregistered and pending holding that the factum of non-registration and pendency of the cited applications was irrelevant to whether the doctrine of approbate and reprobate applied, since the doctrine turns on the consistency of representations made in relation to the specific registration relied upon for relief, not on the registration status of the cited mark.
2. On the question of prior use, the Court found that the Trial Court had committed an asymmetry in its treatment of the two parties’ parallel claims. Both the appellant and Respondent No. 1 had advanced essentially the same type of claim namely, that each was using the mark through a family predecessor, with the appellant relying on his father (Mr. Rajinder Kumar Bansal, trading as M/s Ambay Traders and Manufacturers, operating from the same business address as the appellant) and Respondent No. 1 relying on an “Oral Family Settlement” with Respondent No. 2 (M/s Shiva Traders, proprietored by Respondent No. 1’s mother). The Trial Court had accepted Respondent No. 1’s claim of use since 2003 through this oral family arrangement, while rejecting the appellant’s parallel claim of use since 1985 through his father, on the specific ground that the appellant had failed to demonstrate any formal assignment of the mark from his predecessor without applying the same scrutiny to Respondent No. 1’s claim, notwithstanding that the plaint itself had not even been signed or verified by Respondent No. 2, the very party from whom Respondent No. 1 claimed to have derived rights via the oral settlement. The Court held that this differential treatment, applying a formal-assignment requirement to one party’s succession claim while accepting the other’s informal, undocumented “oral” succession claim without similar scrutiny, was not justified on the material before it.
3. On the appellant’s invoices, the Court examined the invoices placed on record by the appellant establishing use of “ATHERMAL” for selling welding glasses by M/s Ambay Traders and Manufacturers and found that these invoices dated back to the year 1990. Considering these invoices together with the fact that Mr. Rajinder Kumar Bansal, trading as M/s Ambay Traders and Manufacturers, is the appellant’s father and operated from the same business address as the appellant, the Court held that a prima facie case was made out that the appellant had been using the mark “ATHERMAL” through his predecessor-in-title since at least 1990.
4. On the cross-allegations of fabrication of invoices levelled by each party against the other, the Court held that this was a matter requiring examination during trial and that, based on the available record at the interlocutory stage, there was no prima facie finding of fabrication established against either party’s invoices, the question being left open for final adjudication at trial.
5. Applying the well-settled principle that the prior user of a trademark possesses superior rights as against a mere registrant of that mark, the Court held that since the appellant, through his predecessor-in-title, was prima facie the prior user of the mark “ATHERMAL,” with invoices dating back to 1990, the appellant’s rights as prior user were superior to the rights of Respondent No. 1, who held a registration of the Subject Mark but whose own claimed user date (2003, through Respondent No. 2 pursuant to an oral family settlement) was later in time and less rigorously established than the appellant’s documented 1990 user claim.
6. In view of the foregoing analysis, the Court allowed the appeal and set aside the impugned order dated 05.01.2019. Consequently, the application filed by the respondents under Order XXXIX Rules 1 and 2 of the CPC in the Suit stood rejected and the application filed by the appellant under Order XXXIX Rules 1 and 2 of the CPC in the counter-claim stood allowed. The Court accordingly restrained the respondents, their agents, servants, employees, representatives, assignees or anyone acting on their behalf, during the pendency of the Suit, from using the Subject Mark in respect of welding apparatus and instruments, welding safety glasses, welding cables, regulators, welding transformers, welding machines, welding tools and allied and cognate goods or any other mark identical or deceptively similar to the appellant’s mark “ATHERMAL,” amounting to passing off of the appellant’s mark. The Court expressly clarified that the observations made in the judgment were for the limited purpose of deciding the appeal and would not affect the merits of the Suit pending before the Trial Court. The appeal was disposed of in these terms.

STATUTORY PROVISIONS INVOLVED

Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 govern the grant of temporary injunctions. Both parties had filed cross-applications under these provisions before the Trial Court, each seeking to restrain the other from using the mark “ATHERMAL.” The Trial Court’s allowance of the respondents’ application and dismissal of the appellant’s application formed the subject matter of the appeal and the Court’s final order reversed this position, allowing the appellant’s application and rejecting the respondents’.

Order XLIII Rule 1 read with Section 151 of the Code of Civil Procedure, 1908 provided the statutory basis for the present appeal against the order passed on the Order XXXIX Rules 1 and 2 applications.

While the judgment does not extensively cite specific sections of the Trade Marks Act, 1999 by number in the operative analysis (unlike some other judgments in this line of cases), the underlying substantive principles applied by the Court namely, the doctrine that a registered proprietor’s rights under registration are subordinate to the superior rights of a genuine prior user of an identical or similar mark and the equitable doctrine of approbate and reprobate (estoppel arising from inconsistent representations made before the Trade Marks Registry) are principles drawn from established trademark jurisprudence and from this Court’s decision in Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38, which the Court treated as the controlling precedent on the approbate-and-reprobate question. The Court extracted paragraphs 43 and 44 of that decision, which articulate the principle that a party obtaining registration on the basis of an assertion of dissimilarity from a cited mark cannot later seek an interim injunction against the proprietor of that cited mark by alleging deceptive similarity, since a person is not permitted to approbate and reprobate and a party making contrary assertions before different fora is not entitled to equitable relief.

REASONING OF THE COURT

The Court’s reasoning proceeded through a careful, document-by-document reconstruction of the trademark prosecution history between the parties, before applying the principle from Raman Kwatra and then turning to the separate, though related, question of prior use.

On the approbate-and-reprobate issue, the Court’s methodology was notably precise: rather than treating the respondents’ multiple representations of dissimilarity (made across five separate examination report responses between 2015 and 2018) as a blanket disqualification from seeking any relief whatsoever against the appellant’s use of “ATHERMAL,” the Court carefully traced which specific respondent application each representation had been made in connection with and cross-referenced this against the specific application (the Subject Mark, No. 1941345) upon which the Suit and the sought injunction were actually founded. This granular analysis revealed that none of the representations of dissimilarity had, in fact, been made in connection with the Subject Mark itself the appellant’s mark had simply never been cited as a conflicting prior mark against that particular application during its prosecution. The Court reasoned that the doctrine of approbate and reprobate, properly understood, operates to prevent inconsistency between the representation made to secure a particular registration and the position later taken to enforce that very registration; it does not operate as a general bar against any assertion inconsistent with representations made in entirely separate, unrelated proceedings concerning different applications. On this narrower and more precise understanding of the doctrine’s scope, the Court concluded that the respondents’ representations regarding other applications could not retroactively taint or estop their distinct claim founded on the Subject Mark. The Court’s rejection of the respondents’ alternative argument (that the principle was inapplicable because the appellant’s cited applications were unregistered) reinforced this approach: the registration status of the cited mark is irrelevant to the doctrine’s application, because what matters is the relationship between the representation made and the registration relied upon for relief, not the registration status of any third mark referenced in that representation.

Having cleared the path of the approbate-and-reprobate defence (in the appellant’s favour for the marks other than the Subject Mark, but ultimately finding it inapplicable to bar the respondents’ claim on the Subject Mark itself), the Court turned to the substantive and ultimately decisive question of prior use. Here, the Court’s reasoning rested on a comparative and symmetry-based critique of the Trial Court’s approach. The Court observed that both parties had presented structurally parallel claims: succession from a family member who had allegedly used the mark earlier, with both successions resting on informal or undocumented arrangements (the appellant’s claim resting on his father’s prior use with the father’s continued operation from the same premises and apparent informal permission to the appellant to continue the business; the respondents’ claim resting on an entirely oral family settlement with Respondent No. 2, a family member who had not even verified the plaint). The Trial Court had applied a formal-assignment-deed requirement to disqualify the appellant’s succession claim, while accepting the respondents’ equally informal indeed, expressly “oral” succession claim without any comparable scrutiny. The Court found this asymmetrical treatment unjustified, reasoning that if a formal documentary requirement is to be imposed on one party’s claim of derivative use through a family predecessor, the same requirement or at least the same threshold of scrutiny, must logically be applied to the other party’s structurally identical claim; selective rigour applied to only one side’s parallel evidentiary basis cannot be sustained.

Having identified this asymmetry as an error in the Trial Court’s approach, the Court then examined the appellant’s actual documentary evidence the invoices establishing use of “ATHERMAL” on welding glasses by the appellant’s father’s firm and found these to establish a prima facie case of use dating back to 1990, a date earlier than the respondents’ claimed 2003 user date (itself later than even the user date pleaded in the respondents’ own earliest registration application, 18.04.2005, though the Court did not dwell on this internal inconsistency in detail). Treating the cross-allegations of invoice fabrication as matters of disputed fact requiring full evidentiary examination at trial and finding no basis, on the limited material available at the interlocutory stage, to make any prima facie finding of fabrication against either party the Court proceeded to apply the settled principle that a prior user’s rights are superior to a mere registrant’s rights. Since the appellant’s documented use (from 1990) predated the respondents’ claimed use (from 2003) and since the Trial Court’s contrary conclusion rested on the now-identified asymmetrical and unjustified differential treatment of the two parties’ comparable succession claims, the Court concluded that the balance of equities, properly assessed, favoured the appellant, warranting reversal of the Trial Court’s injunction and grant of the converse relief sought by the appellant.

DOCTRINAL SIGNIFICANCE

This judgment makes two distinct doctrinal contributions, one refining the scope of the approbate-and-reprobate principle in trademark prosecution estoppel cases and the other illustrating the importance of evidentiary symmetry when courts assess competing claims of succession-based prior use in family business disputes.

On the first theme, the judgment provides an important clarification and limiting principle for the application of Raman Kwatra v. KEI Industries Ltd. Rather than treating any representation of dissimilarity made by a party before the Trade Marks Registry, in connection with any of its trademark applications, as an absolute and generalized bar against that party later asserting deceptive similarity in litigation, this judgment establishes that the estoppel must be assessed application-by-application: the relevant question is whether the specific registration being relied upon for relief in the litigation was itself the subject of the inconsistent representation. Where, as here, a party has multiple trademark applications in its portfolio and representations of dissimilarity were made only in connection with some of those applications (none of which form the basis of the litigation), the doctrine does not operate to disqualify a claim founded on a separate, untainted application. This is a significant practical clarification for litigants and practitioners managing trademark portfolios comprising multiple related applications, since it confirms that prosecution history estoppel arguments must be precisely mapped to the specific registration in suit, rather than applied as a blanket disqualification across a party’s entire trademark portfolio.

On the second theme, the judgment offers a valuable illustration of appellate scrutiny applied to ensure even-handedness in trial court fact-finding at the interlocutory stage, particularly in disputes between family members or successor businesses where documentary evidence of succession (assignment deeds, partnership instruments or formal transfer documents) is frequently absent or informal, reflecting the practical reality of small and family-run trading businesses in India. The judgment signals that where a court applies a particular evidentiary threshold (such as requiring proof of formal assignment) to reject one party’s claim of derivative use through a predecessor, the same threshold must, as a matter of basic fairness and consistency, be applied to any comparable claim advanced by the opposing party, especially where that opposing claim is, if anything, less formally documented (an entirely “oral” family settlement, with the underlying transferring party not even verifying the pleadings).

The judgment also reaffirms, without need for extended elaboration, the foundational and well-settled principle of Indian trademark law that the rights of a prior user of a mark are superior to those of a subsequent registrant a principle with deep roots in passing-off jurisprudence and one that continues to operate independently of and indeed in supersession of, statutory registration where genuine prior use is established.

The judgment must be read as a ruling on cross-applications for interim injunction, reversing the Trial Court’s interlocutory findings on prior use and approbate-and-reprobate. The Court was careful to clarify, in its concluding observations, that its findings were made solely for the purpose of deciding the present appeal and would not bind or otherwise affect the final merits determination to be made by the Trial Court following a full trial, including final findings on the authenticity of the invoices relied upon by each party, the validity (if any) of the alleged oral family settlement and the ultimate questions of infringement and passing off.

Frequently Asked Questions:

1. What was the outcome of Amit Bansal v. Amit Garg?
   The Delhi High Court allowed the appeal, set aside the trial court’s injunction against the appellant, and instead restrained the respondents from using the “ATHERMAL” mark, holding the appellant to be the prior user.
2. Does prior use of a trademark override a later registration?
   Yes – the Court reaffirmed the settled principle that a genuine prior user of a mark holds superior rights over a subsequent registrant, even where the registrant has obtained formal registration.
3. What is the principle of approbate and reprobate in trademark prosecution?
   It is an estoppel doctrine, drawn from Raman Kwatra v. KEI Industries, preventing a party from representing to the Trade Marks Registry that two marks are dissimilar and later asserting deceptive similarity between the same marks in litigation founded on that same registration.
4. Does the approbate and reprobate doctrine apply across a party’s entire trademark portfolio?
   No – this judgment clarifies that the estoppel must be assessed application-by-application, applying only where the inconsistent representation was made in connection with the specific registration relied upon for relief, not any unrelated application in the same portfolio.
5. How did the Court treat the competing family succession claims in this case?
   The Court found the trial court had wrongly applied a stricter documentary standard to one party’s claim of use through a family predecessor while accepting the other party’s undocumented oral family settlement without similar scrutiny, and corrected this asymmetry on appeal.

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