Trademarks

Old Invoices, New Trouble: Prior Use Trumps Registration in ATHERMAL Case

Gaurav Mishra · · 8 min read

Vintage commercial invoices from the early 1990s scattered on a dark charcoal surface, with a brass magnifying glass resting on top — representing the decades-old documentary evidence at the centre of the ATHERMAL trademark prior use dispute. Featured image for: Old Invoices, New Trouble: Prior Use Trumps Registration in ATHERMAL Case

Summary

Amit Bansal and Amit Garg both claimed prior rights to the word mark ATHERMAL, used on welding apparatus and safety glasses, in a suit that reached the Delhi High Court on appeal from an adverse interim injunction. The trial court had favoured Amit Garg, whose mark was registered, while rejecting Bansal's claim of use through his father's firm dating back to 1985. The Delhi High Court reversed that order, finding that Bansal had made out a prima facie case of prior use through invoices from 1990 and that the trial court had applied an inconsistent standard by accepting Garg's oral family settlement claim while demanding a formal assignment from Bansal. The ruling reinforces the principle that prior use confers rights superior to registration, and flags the limits of the approbate and reprobate doctrine when the same-application nexus is absent.

Background

A single five-letter word on a welding safety glass became the flashpoint for a priority dispute stretching across decades of family business, competing trademark applications, and a contested stack of invoices that each side called genuine and the other called fake.

Amit Bansal, trading as M/s Ambay Industrial Corporation (“Bansal”), sells welding apparatus, welding safety glasses, and allied goods under the mark ATHERMAL. His case for prior trademark use rests on his father, Mr. Rajinder Kumar Bansal, who traded as M/s Ambay Traders and Manufacturers from the same business address and who, Bansal claims, coined and used the mark ATHERMAL from as early as 1985. Bansal himself set up his independent firm in 2006, using the same mark with his father’s permission.

Amit Garg, trading as M/s Athermal Industries AG (“Garg”), and M/s Shiva Traders, a family-owned proprietorship whose sole proprietor is Garg’s mother (“Shiva Traders”), together form the respondent side. Garg contends that he began using the Subject Mark (a stylised device mark incorporating the word ATHERMAL) through Shiva Traders, his predecessor, from the year 2003, under what he describes as an oral family settlement. Garg filed a trademark application for the Subject Mark in Class 9 in March 2010, claiming user since April 2005, and obtained registration (Certificate No. 1692988) in November 2017.

Bansal had filed his own applications for the word mark ATHERMAL in Classes 9 and 7 in April 2011, claiming user from April 2006. Those applications remain pending. Garg filed opposition to both in March 2018, and around the same time filed suit before the Additional District Judge, Rohini Courts, Delhi, seeking a permanent injunction for infringement and passing off. The trial court, in its order dated 5 January 2019, granted Garg’s interim injunction application and rejected Bansal’s cross-application, restraining Bansal from using the mark ATHERMAL during the pendency of the suit. Bansal appealed to the Delhi High Court.

The High Court stayed the trial court order in January 2019. In December 2022, it observed that the mark ATHERMAL, when used on welding glasses, was prima facie descriptive. In July 2023, it flagged that Garg had taken a position in replies to multiple trademark examination reports, asserting that his marks were different from ATHERMAL, and noted that this might affect his case in light of the court’s decision in Raman Kwatra v. KEI Industries Ltd., 2023 SCC OnLine Del 38. The matter was heard finally across three dates in late 2025 and judgment was delivered on 31 January 2026.

Issues

      • Whether the doctrine of approbate and reprobate, as articulated in Raman Kwatra, applied to bar Garg from seeking an injunction against Bansal’s mark ATHERMAL, given Garg’s prior assertions of dissimilarity in replies to trademark examination reports.
      • Whether Bansal had established prima facie prior use of the mark ATHERMAL through his predecessor-in-title, sufficient to confer rights superior to Garg’s registration.
      • Whether the trial court’s interim injunction in favour of Garg was sustainable.

Bansal’s Arguments

      • The mark ATHERMAL was coined and used by his father’s firm, M/s Ambay Traders and Manufacturers, from 1985 onwards, with invoices on record establishing use from 1990, and Bansal himself used the mark from 2006 as a continuation of the family business from the same trading address.
      • Garg’s own documents showed that M/s Athermal Industries AG came into existence only in October 2011, which contradicted the claimed use from 2003.
      • Garg filed replies to multiple examination reports issued by the Trade Marks Registry, asserting that ATHERMAL (Bansal’s word mark) was visually, phonetically, and structurally different from Garg’s marks, and that there was no likelihood of public confusion. Garg was therefore barred from now claiming deceptive similarity under the doctrine of approbate and reprobate, as affirmed in Raman Kwatra.
      • Garg produced only five invoices to establish use from 2003 to 2011, and those invoices were fabricated, a position supported by a telephonic conversation filed in evidence and a police complaint lodged by one of the persons named in those invoices.

Garg’s Arguments

      • Use of the Subject Mark began through Shiva Traders, Garg’s predecessor under an oral family settlement, from the year 2003, and the trademark application in Class 9 was filed in March 2010 claiming user from April 2005 – making Garg both the prior applicant and, as he contended, the prior user.
      • Bansal set up his own independent business only in 2006, and his claimed link to his father’s business was unsubstantiated: no assignment deed was executed, his father was not impleaded as a party, and Bansal’s own trademark applications claimed user from April 2006, not 1985.
      • Raman Kwatra was distinguishable: the rule applies only where a party obtains registration on the basis of an assertion of dissimilarity. Bansal’s applications, against which the dissimilarity assertions were made in examination replies, remain pending and unregistered. No registration was secured on the strength of those assertions, so the doctrine could not be triggered.
      • Bansal’s invoices, purporting to show use from 1990 to 1999, were fabricated, and use after 1999 was abandoned in any event.

Court’s Observations and Analysis

The Scope of Approbate and Reprobate

The court noted that the rule established in Raman Kwatra v. KEI Industries Ltd. bars a party from obtaining an interim injunction against the proprietor of a cited mark after that party has secured its own registration by representing to the Trade Marks Registry that the cited mark is dissimilar. A party that takes one position to gain a legal benefit and then pleads the opposite in court is caught by the doctrine that a person cannot approbate and reprobate.

However, the court observed that the doctrine’s application depends on a specific factual condition: the dissimilarity assertion must have been made in relation to the particular application on whose strength the injunction is now sought. Here, Garg’s examination report replies asserting dissimilarity from ATHERMAL were made in respect of his Applications Nos. 2543087, 2277118, 2207990, and 2277143. The suit, and the injunction sought in it, was founded on Application No. 1941345 in Class 9, which is the registered Subject Mark. Bansal’s mark ATHERMAL was not cited against Application No. 1941345. Garg made no assertion of dissimilarity in respect of that application.

The court held that the doctrine of approbate and reprobate was therefore not available to Bansal on the facts of this case. The nexus between the assertion of dissimilarity and the registration on which the injunction is founded was absent. The court further observed that the pendency or registration of Bansal’s applications was, in any case, irrelevant to this inquiry.

Prior Use and the Inconsistency in the Trial Court’s Approach

The court noted that the core of the prior trademark use dispute came down to an asymmetric treatment by the trial court of claims that rested on the same evidentiary footing. Both Bansal and Garg grounded their prior use claims in use by a family predecessor, not personal use by the party themselves, and both produced documentary evidence in support.

The court observed that the trial court accepted Garg’s claim of use through Shiva Traders under an oral family settlement from 2003, while rejecting Bansal’s claim of use through his father’s firm on the ground that no formal assignment deed had been executed. The court found that applying a formal assignment requirement to Bansal’s claim while accepting an oral family settlement for Garg’s claim was not a principled distinction. Shiva Traders, Garg’s predecessor, had not even signed or verified the plaint.

The court further observed that the invoices filed by Bansal, taken together with the fact that his father’s firm operated from the same address and Bansal’s father was his predecessor-in-title, made out a prima facie case that ATHERMAL had been in use since at least 1990. The court noted that allegations of fabrication by both sides were matters for final adjudication at trial and could not be resolved at the interim stage on the available record. No prima facie fabrication was established.

The court held that it is well settled that the prior user of a mark has rights superior to those of its registrant. With Bansal’s invoices establishing use from 1990 and Garg’s user claim tracing back to 2003 at the earliest, the court found that Bansal was, prima facie, the prior user of ATHERMAL. That prior use right was superior to Garg’s registration, regardless of its validity.

Findings

In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:

      • The doctrine of approbate and reprobate, as laid down in Raman Kwatra v. KEI Industries Ltd., did not apply, because Garg’s assertions of dissimilarity in examination report replies were made in respect of applications different from the registered Subject Mark on which the suit was founded; no dissimilarity claim was ever made in relation to Application No. 1941345.
      • The trial court applied an inconsistent standard by accepting Garg’s oral family settlement as sufficient to establish user through a predecessor while rejecting Bansal’s claim for want of a formal assignment deed, even though both claims rested on family-predecessor use.
      • Bansal’s invoices established prima facie prior use of ATHERMAL from at least 1990, predating Garg’s earliest user claim by over a decade.
      • Prior trademark use confers rights superior to those of a registrant; Bansal’s prior user rights therefore outweighed Garg’s registration.
      • The trial court’s interim injunction order dated 5 January 2019 was set aside; Garg’s interim injunction application stood rejected.
      • Bansal’s interim injunction application in the counter-claim was allowed; Garg, his agents, servants, employees, representatives, and assignees were restrained, during the pendency of the suit, from using the Subject Mark or any mark identical or deceptively similar to ATHERMAL in respect of welding apparatus, welding safety glasses, welding cables, regulators, welding transformers, welding machines, welding tools, and allied goods.
      • All observations in the judgment are limited to the appeal and shall not affect the merits of the pending suit before the trial court.

Case Citation: Amit Bansal v. Amit Garg & Anr., FAO-IPD 37/2021, High Court of Delhi, decided on 31 January 2026. Available on https://indiankanoon.org/doc/150561407/

Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels

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