M/s Gopika Industries Vs Dayal Industries Pvt. Ltd.

Recently, the Delhi High Court dismissed the application filed by Dayal Industries Private Limited (“Defendant”), seeking permission to file a rectification petition against M/s Gopika Industries’ (“Plaintiff”) registered mark DYAL. The Plaintiff filed a suit, inter alia, alleging that its mark DYAL in Class 31 (dated April 4, 1996) has been infringed by the Defendant. In its written statement, the Defendant laid down four grounds: (a) it is the prior user of DAYAL, used for cattle feed since 2000, vis-à-vis the Plaintiff whose earliest invoice is of 2001; (b) prior user rights through its flagship company, which began use of DAYAL in an allied and cognate class in 1979; (c) Defendant’s mark DAYAL is similar to DYAL; and (d) Plaintiff is attempting to ride on Defendant’s goodwill. The Defendant and its flagship company have also filed a commercial suit against the Plaintiff for infringement and passing off DAYAL.

Counsel for Defendant contended that it has used DAYAL since December 5, 2000, as evidenced by a purchase order, whereas the Plaintiff’s earliest invoice dates from 2001. Though the Plaintiff’s registration is dated April 4, 1996, there is no demonstrable use till 2001. He argued that prior registration without contemporaneous use would disentitle the Plaintiff from invoking Section 34. Counsel for Plaintiff relied on Section 34 and Worknest Business Centre LLP vs. Worknests, and alleged that the Plaintiff’s correspondence with statutory departments in 1996, 1998, and 1999 shows use of DYAL.

The Hon’ble High Court, relying on Worknest Business, settled that the relevant date for establishing prior use by the Defendant would be the Plaintiff’s registration date, i.e., April 4, 1996, and not the first commercial invoice, i.e., June 1, 2001. It observed that documents of the registered proprietor showing steps to commence commercial use are evidence of commercial intent. The Defendant’s claim of prior rights since 1979 was dismissed since its application claimed use since May 6, 2000, and it was not carrying out any sales under DAYAL for cattle feed.

While dismissing the application, the court held that the plea of invalidity raised by the Defendant is not tenable and does not give rise to a triable issue. It clarified that these observations shall not impact the merits of pending proceedings and listed the matter on December 12, 2025.

Read the Judgement copy here.