The main legal point established in the judgment is the determination of prior user in trademark disputes and the impact of improper trademark registration and advertisement on the validity of the mark.

Prathiba M. Singh, J.

1. The present appeal has been preferred against the final judgment and decree dated 9th January, 2009 by which the learned Trial Court dismissed the suit of the Appellant/Plaintiff (hereinafter ‘Plaintiff’) and partly decreed the counter claim of the Respondent/Defendant (hereinafter ‘Defendant’). The operative portion of the impugned judgment is set out below :

“Accordingly, I dismiss the suit of the plaintiff and partly decree the counter claim of the defendant. Accordingly, I pass a decree for permanent injunction in favour of the defendant and against the plaintiff thereby restraining the plaintiff, its proprietor, principal officers, servants, agents and representatives or any of them from manufacturing, selling, offering to sale or supply, advertising, directly or indirectly dealing in locks or locking devices bearing the trade mark VIJAYAN or any other deceptively similar mark and so packaged as to misrepresent their goods as those of or approved by or associated with the defendant in any manner and from doing any other thing as may be likely to lead to passing off of the plaintiff’s goods or business as and for those of the defendant. The plaintiff is directed to deliver all the goods bearing the impugned trade mark and other materials to the defendant for the purpose of destruction/erasure within 30 days from today.

In affidavit EX.DW1/A, DW-1 has not made a prayer for grant of relief of rendition of accounts or for damages. Therefore, no such relief can be granted to the defendant. Parties are left to bear their own costs. Decree sheet be prepared accordingly.”

2. The dispute relates to the trademark VIJAYAN used in relation to locks, locking devices and handles. The Plaintiff filed a suit for infringement of registered trade mark and passing off. It claimed that it had used the mark VIJAYAN since 1946 through its predecessor, from whom it had acquired the rights. According to the Plaintiff, the Defendant subsequently adopted and used the said mark for identical goods and hence the prayer for injunction.

3. The Defendant claimed that it adopted the trademark VIJAYAN and started using the same since 1960. It filed an application for registration of the trademark on 10th July, 1984. The said mark was advertised in the trademark journal on 1st March, 1991 with the user claim of 1960. The Defendant also filed a copyright application which was registered as A-46227/1984 for the artistic work. It thereafter came across a notice issued on 1st January, 1996 by the Plaintiff (Mr. Rakesh Kumar Aggarwal). By the said notice the Plaintiff had asserted rights in the mark VIJAYAN and called upon the public /dealers not to use the same in violation of its rights. When the Defendant came to know of the same, it issued a letter dated 30th January, 1996 by which it called upon the Plaintiff to disclose its date of use of the trademark VIJAYAN and the registration of the same. Upon not receiving a reply, it sent a reminder dated 21st March, 1996 (Ex.DW-1/4).

4. In the meantime, the Plaintiff instituted the present suit on 7th May, 1996 before the Delhi High Court wherein an ex parte order of injunction was passed against the Defendant from using the mark and label VIJAYAN in respect of locks and other allied, cognate and related goods. The case made out in the plaint was that the Plaintiff is the registered proprietor of the trademark VIJAYAN label vide registration No.532484 which was applied for on 2nd July, 1990. The Plaintiff claimed that it had the exclusive right to use the mark in view of the registration. The Plaintiff further claimed that the Defendant’s mark and the products were identical and hence an injunction is liable to be granted against the Defendant.

5. The Defendant filed an application seeking vacation of injunction on the ground that the suit was founded on fraud inasmuch as out of