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8. The plaintiff claims to be the prior user of the trademark to the knowledge of the defendant and being prior in point of time claims to be the proprietor of the said trademark.

9. The defendant, also a company incorporated under the Companies Act, 1956, on the other hand, denies passing off its products as those of the plaintiff and claims to be the legal and lawful proprietor of the trademark "GEMCAL" and denies that it is the subsequent user of the trademark. It is stated that the plaintiff is guilty of suppresio veri and suggestion falsi. The defendant contends that from the trademark application of the plaintiff which has been filed on a 'proposed to be used' basis, it is clearly established that the plaintiff had not adopted the said mark till April 2000.

14. On 28.02.2006, the following issues were framed by this Court:

i. Whether the plaintiff is the proprietor of the trademark GEMCAL in respect of pharmaceuticals and medicinal preparations? OPP ii. Whether the plaintiff is the prior user of the trademark GEMCAL in respect of pharmaceuticals and medicinal preparations? OPP iii. Whether the defendant has adopted the trademark GEMCAL prior to the adoption/user of the plaintiff? OPD iv. Whether the defendant is guilty of passing off its goods as that of the plaintiff by use of the trademark GEMCAL in respect of similar goods? OPP v. Whether the suit is liable to be stayed under Section 10 of the Code of Civil Procedure (hereinafter referred to as the said code) in view of the prior suit filed by the defendant against the plaintiff in the District Courts at Gurgaon? OPD Issue 1 Whether the plaintiff is the proprietor of the trademark GEMCAL in respect of pharmaceuticals and medicinal preparations? OPP

23. In view of the aforesaid, the plaintiff has been unable to prove that it is the proprietor of the product bearing the mark "GEMCAL".

24. The first issue is thus answered against the plaintiff.

Issues 2 and 3

ii) Whether the plaintiff is the prior user of the trademark GEMCAL in respect of pharmaceuticals and medicinal preparations? OPP

iii) Whether the defendant has adopted the Trademark GEMCAL prior to the adoption/user of the plaintiff? OPD

25. The second and third issues relate to the prior user/adoption of the Trademark "GEMCAL". A right of property in a trademark can also be acquired through use of the trademark in relation to particular goods or by simultaneous prolonged user by more than one in a given area under certain circumstances. Thus, it is to be seen as to which of the parties is the prior user of the trademark or whether there has been concurrent use by both the plaintiff and the defendant.

39. In a judgment of a division bench of this Court in Senor Laboratories Ltd. v. Jagsonpal Pharmaceuticals Ltd. (1998) PTC (18) (DB) 499, the defendant had obtained a drug license in January 1992 and had been manufacturing its pharmaceutical preparations since August 1992 while the plaintiff claimed that it had been continuously using the trade mark is question since 1st April 1990. The plaintiff, however, had neither filed the drug license for the manufacture of medicine under the trademark in question nor had filed any sales figures/invoices for the period prior to 1990. The application filed in February 1993 for registration contained the words proposed to be used. The approach of the learned single judge was held contrary to the principle that no injunction can be issued against a prior user of the trademark in a passing off action. The defendant, being the prior user, was held to have made out a prima facie case for grant of ad interim injunction