Prior user of a trademark has superior rights over a registrant; injunction cannot be granted to a party making contrary assertions about trademark similarity.

JUDGMENT :

TEJAS KARIA, J.

1. The present Appeal has been filed by the Appellant under Order XLIII Rule 1 read with Section 151 of the Code of Civil Procedure, 1908 (“CPC”) assailing the order dated 05.01.2019 (“Impugned Order”) passed by the learned Additional District Judge-04, North West, Rohini Courts, Delhi (“Trial Court”) in CS No. 1/2018 (“Suit”) whereby the learned Trial Court allowed the application of the Respondents under Order XXXIX Rules 1 and

2 of the CPC granting interim injunction restraining the Appellant from using the Trade Mark ‘ATHERMAL’ or any other deceptively similar Mark during the pendency of the Suit, while dismissing the application of the Appellant under Order XXXIX Rules 1 and 2 of the CPC.

FACTUAL BACKGROUND:

2. The Respondents filed the Suit before the learned Trial Court, inter alia, seeking permanent injunction restraining the infringement and passing off of the Mark ‘’ (“Subject Mark”) claiming that the Appellant illegally imitated the Subject Mark of the Respondents by using the Mark ‘ATHERMAL’.

3. The Plaint filed before the learned Trial Court claims that Respondent No. 1, Mr. Amit Garg is carrying on his business as M/s Athermal Industries AG, manufacturing and marketing a range of goods associated with the same and Respondent No. 2 is a proprietorship concern of the family members of Mr. Amit Garg and the said entity is selling all the said range of goods under the Subject Mark.

4. The Respondents claim that the Subject Mark was honestly coined and adopted by Mr. Amit Garg trading as M/s Athermal Industries AG, through their predecessor, in the year 2003. An Application for the registration of the Subject Mark was filed on 25.03.2010 before the Trade Mark Registry bearing Application No. 1941345 in Class 9. The Subject Mark was successfully registered by the Trademark Registry vide Certificate No. 1692988 dated 01.11.2017.

5. In the Written Statement/Counter Claim filed by the Appellant, it is claimed that the Appellant has 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, who is operating the business from the same address. Mr. Rajinder Kumar Bansal is the father of the Appellant.

6. It is further asserted in the Written Statement/Counter Claim that the Appellant commenced his business independently in the year 2006, using the Mark ‘ATHERMAL’, which was adopted and used by his father and was subsequently used by the Appellant in his own firm, M/s Ambay Industrial Corporation.

7. In the proceedings before the learned Trial Court, both the Appellant and the Respondents filed their respective applications under Order XXXIX Rules 1 & 2 of the CPC, seeking interim injunction restraining the usage of the Mark ‘ATHERMAL’. Vide the Impugned Order, the learned Trial Court allowed the application filed by the Respondents, and dismissed the application filed by the Appellant, thereby restraining the Appellant from using the Mark ‘ATHERMAL’.

8. Aggrieved by the Impugned Order passed by the learned Trial Court, the present Appeal has been filed by the Appellant.

PROCEDURAL HISTORY

9. Vide order dated 25.01.2019, notice was issued in the present Appeal and the matter was listed for 08.02.2019. Vide order dated 08.02.2019, this Court stayed the Impugned Order passed by the l