Its is well known fact that right in a Trademark can be acquired either by way of registration or by way of user. For obtaining Trademark registration, detail procedure has been prescribed in Trademark Act 1999.

Apart from statutory rights , Trademarks Act 1999 also recognizes common law right in a Trademark. In fact common law rights prevails upon the rights granted by the Trademark Registration.

However common law remedy is rather inconvenient remedy and for proving common law right, right holder has to establish prior and continuous user of a Trademark. Now this question becomes crucial as to how a party can prove prior user of a Trademark? This off course can be proved wither by invoices, advertisement material etc. Thus it is clear that invoices play an important role in establishing prior adoption and continuous user of Trademark.

What could be relevance of those invoices in proving the user of a trademark , wherein Trademark is not mentioned? Or put in a different way, can a party claim prior user on the basis of such invoices where Trademarks are not appearing?

This issue cropped up in a Commercial Suit bearing (CS) (COMM) 395 of 2022 titled as Vinita Gupta Vs Amit Arora before the Hon'ble High Court of Delhi where in vide Judgement dated 28.09.2022 passed therein , some light was put on this aspect.

The Plaintiff filed the subject matter Suit for infringement of Copyright and Passing off on the basis of proprietary rights in the Trademark, packaging, get-up and trade dress APPLES TREE in relation to manufacturing and marketing of Abrasive Strips, Abrasive Rolls, Abrasive Paste etc. as well as Silicon Carbide Waterproof Abrasive Paper, Velcro Disc, Sandpaper and other allied and cognate goods.

Suit was filed against use of similar Trademark Trademark, packaging, get-up and trade dress against use of trademark APPLEPLANT and NUAPPLEPLANT by the Defendant in relation to manufacturing and marketing of Abrasive Papers etc. The relief of Infringement of Trademark was not sought for as the Defendant was also the registered Proprietor.

In view of law laid down by the Hon'ble Supreme Court of India in Judgement reported as S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 and of the Hon'ble Court of Delhi in Rana Steels Vs Ran India Steels Pvt. Ltd., 2008 SCC OnLine Del 399, the remedy of infringement of Trademark is not maintainable against the Defendant in case the Defendant is also registered Proprietor of Trademark.

Now whole question revolved around this factum as to whos is the prior user of Trademark, Label or Trade Dress as the Hon'ble Court reached the conclusion that competing Trademark, packaging, get-up and trade dress of the parties namely APPLES TREE of the Plaintiff and Trademark, packaging, get-up and trade dress of the parties namely APPLEPLANT and NUAPPLEPLANT were deceptively similar.

In the subject matter Suit , the Plaintiff claimed prior user of the subject matter Trademark since the year 2008 , though this claim was disputed by the Defendant on the ground that Plaintiff has claimed contradictory user in its different Trademark applications , i.e. since 2017. While was claiming user since 2019.

As the Plaintiff claimed different user , i.e. since the year 2017 in its various Trademark applications, the issue was to be adjudication as to since when the Plaintiff actually used the Trademark APPLES TREE since the year 2008 as the same has claimed in the subject matter Suit.

The court observed that though the Plaintiff produced on record various invoices since 2008 , however in all of those invoices only product detail namely Palm Tree was mentioned and not the trademark. These were the invoices since the year 2018 onwards where the Trademark were mentioned.

Hence in spite of Plaintiff putting on record various invoices since the year 2008, the court considered only those invoices from since 2018, wherein the Trademark was mentioned in the invoices. However still the Plaintiff was able to establish establish prior user as Defendant's claimed user was since 2019.

Thus the Hon'ble High Court of Delhi was pleased to grant injunction against the Defendants from selling, offering for sale any goods, advertising or promoting any product under the trademark APPLEPLANT or any trademark deceptively similar or identical to Plaintiff's trademark APPLES TREE.

We have seen that no trademark significance can be attached to those invoices where only description of products are mentioned in the Invoice and not the Trade Mark. It is advisable for a Tradesman to always mention Trademark in all of its invoices if he is desirous of protecting its Intellectual Property Rights.

From bare perusal of present Judgement of Hon'ble High Court of Delhi, it is clear that invoices containing only the description of goods only , without not mentioning the Trademark , are irrelevant for the purpose of proving the Trademark user. In fact unbranded invoices has got no trademark significance.

Case Law Discussed:
Vinita Gupta Vs Amit Arora
Judgement date:28.09.2022
Appeal No.(CS)(COMM) 395 of 2022
Name of Court: Delhi High Court
Name of Hon'ble Justice: Jyoti Singh, H.J.

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
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