This article by Darshan K. Hampannavar deals with the hustle and bustle of the First use under Trademark Law in India. I. Introduction: Hustle And Bustle Of First Use Under Trademark Law In India We all get one question in the mind often, i.e. What happens if we apply for the trademark application and got the trademark registered,… Read More »

This article by Darshan K. Hampannavar deals with the hustle and bustle of the First use under Trademark Law in India.

I. Introduction: Hustle And Bustle Of First Use Under Trademark Law In India

We all get one question in the mind often, i.e. What happens if we apply for the trademark application and got the trademark registered, but later if we find that someone else has been using that Trademark which is the same trademark since before we had filed?

Then….the principle of “Priority in the adoption and the use prevails over to that of priority in registration” seems to hold good in this particular context. It is a well-known judicial principle that the rights of a prior user of the Trademark are kept on a higher priority than even that of the proprietor of that registered trademark. It is a very essential fact to note that, Prior user’s rights will be overridden on those of a subsequent user even though the subsequent user has done all the registration of its trademark.

II. Statutory Provision Relating To Prior Usage Under Trademark Law

In accordance, with the Section 34 of the Trademarks Act, 1999 “the proprietor of the registered trademark or a registered user of that Trademark, shall not be able to interfere with the usage of any same or identical Trademark if that person started using that Trademark from much before than the date of registration of other registered people”.

This section provides provision for the protection of the vested rights preventing a proprietor or registered recent or latest user of that trademark from interfering with the honest person’s use of on identical trademark or a mark nearly resembling with the registered mark.[1]

III. What Fundamental Requirements Are Essential For The Acknowledgement Of The “Prior Usage”

The following conditions are much essential for the purpose of acknowledgement of “Prior Use”:

  1. The usage of the Trademark which is same or nearly seems to be resembling to that of the registered mark, by a later person, must be present in relation with that goods and services for which the first-mentioned mark was registered;
  2. The usage of the Trademark must & should be the continuous usage of the trademark in India;
  3. The trademark shall be used by the same proprietor only, in order to avail that protection;
  4. The Trademark had been used from a date much prior to that of the usage of the registered trademark or the date of registration whichever was earlier.[2]

IV. Often Disputed Question Of Fact Would Be “Who Has First Used The Trademark Or Name”

Under section 34 of the Trademark Act, the defense is made available to that person who is really using the Trademark much prior than the person who has just registered the Trademark & used Trademark later than the first user. In order to get proven the fact of using the Trademark much earlier, then it is necessary to comply with the contingent requirements which are mentioned under section 34. There is a necessity that, there should be a forceful demonstration showing that, the Trademark has been already used in order to get benefits under section 34 of the Act.

One of the best example to show that, the Trademark was used much earlier than that of the recently registered Trademark is Disclosure of sales information with all the date & details is an appropriate material in order to prove the prior usage.[3]

V. Rights Of The Prior Users Of Trademark

It is a notable principle of Trademark Law that prior use of the goods will override the latest user, even though the latest user has a registered trademark. Therefore, the rights of prior usage act as an exception to that of the rights of the recently registered Trademark.

  • In one of the recent case, the Hon’ble Supreme Court in the case of Syed Mohideen v. P. Sulochana Bai, [4]had pronounced that the very intension of the Act is such that, the rights of the prior user are recognised superior and are given more preference than that of the registration and the registered proprietor shall have no rights to interfere with the rights of the prior user proprietor.

The aforementioned principle has been enlightened under Section 34 of the Trademark Act, 1999 which enlightens that, a recently registered proprietor or registered user of a trademark shall not have the rights to interfere with the usage of any same or similar mark, from the person who has been started using such a mark from much an earlier date.

  • In one of the Another recent case, in which it has been established that, in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors.[5] wherein, the Hon’ble Supreme Court has probably opined that a recently registered proprietor of a trademark shall not possess the monopoly rights to prevent that of the use by another party of the same mark if that use has been started prior to the usage of that registered mark.

In accordance with that of the aforesaid settled Law, it shall be very much advisable to those companies, who are seeking to register the Trademark, to conduct a proper survey or research on that Trademark for clearing all the aspects of the information regarding the usage of that Trademark, in order to avoid the future legal complications related to the Infringement.

VI. Some of the Recent Judgements:

  • Shambhu Nath & Brothers & Ors v. Imran Khan.[6]

The petitioners, in this case, have claimed that, to have adopted the trademark TOOFAN (Device) in 1987. The petitioners filed an application for registration of the mark TOOFAN (Device) which was granted registration in April 2012. The respondent applied for registration of the trademark SNJ TOOFAN claiming use since August 1, 2016.

The Hon’ble High Court of Calcutta observed that upon comparing the rival marks and nature of goods the trademark SNJ TOOFAN of the defendant appears deceptively similar to the registered trademark TOOFAN of the petitioners. It was further established that the respondent is seeking to pass off his goods as that of the petitioners and resultantly, an order of injunction was passed in favour of the petitioners.

  • Turning Point Institute Private Limited v. M/s Turning Point[7]

The plaintiffs, Turning Point Institute Private Limited claimed to have used the mark TP TURNING POINT (Device) in relation to their services since March 1994, whereas the defendants M/s Turning Point claimed to have used the mark TP TURNING POINT (Device) since 1998. The defendants’ mark got registered in November 2005. The plaintiffs have established their use since 1994 by adducing documentary evidencing corroborating their claims. Thus, rights to use the mark are conferred upon the plaintiffs owing to the prior use of the mark TP TURNING POINT (Device) by them.

It was observed by the Hon’ble Court on the basis of documentary evidence adduced by plaintiffs that use of the mark TP TURNING POINT (Device) by them in respect of their services may be considered distinctive and deserves to be protected as use of the same has been prior in point of time when compared to the use of the mark by the defendants. The Hon’ble Court injuncted the defendants from using the mark TP TURNING POINT (Device), or any other similar word mark or device mark or as a part of their corporate name qua their services.

VII. Conclusion

To conclude, it seems to be evident that, our country gives much importance to the prior usage of the Trademark, than that of the prior registration of Trademark & thus unregistered trademarks with the prior usage are given Protection from the passing off of Trademark & shall not consider it to be Infringement. In fact, there is much risk and complications while proving the prior usage of Trademark and there are many hustled and bustles too. So, It has to be felt very meticulously, & it is quintessential to show all the required documents in order to prove the prior usage.

It is advisable for the new corporates or any enterprisers or any proprietors, who are seeking to have a Trademark that they have to be very careful during such registration process. They have to take a complexes survey before taking any decision for registering the Trademark, in order to ensure that, the Trademark has not been used by anyone one else in the earliest than that of the registration. These all elements have to be taken into account, to eliminate the future consequences.

[1] Intepat Team, Prior User Rights of Trademark in India, INTEPAT [May 28, 2016], Available Here

[2] Satish Sharma, Rights of Prior User of Trademark Prevails over Registered Proprietor, VAKIL NO.1 [Nov 03, 2017], Available Here

[3] Admin, Common Law Rights: First To Use A Trademark Can Prevail Over First To Register, Available Here

[4] Civil Appeal No. 2758 Of 2015

[5] Appeal from order No. 361 of 2005

[6] CS 102 Of 2018

[7] CM Nos.35553-54/2017

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Updated On 20 Jan 2021 6:31 AM GMT
Darshan Hampannavar

Darshan Hampannavar

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