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Rights of Prior User of a Trademark

Khurana and Khurana, Advocates and IP Attorneys India


INTRODUCTION

It is a settled position of law that the prior user of a trademark takes precedence over the subsequent user of an identical or deceptively similar mark. Courts across the country have time and again emphasized the first-user rule in respect of trademarks and have favoured the party that has been using the trademark earlier in time.

SECTION 34 OF THE TRADE MARKS ACT, 1999

Section 34 emphasises on the importance of the first user rule. It postulates that the proprietor or the registered user of a trademark cannot restrain the use by another party having an identical or deceptively similar mark if:

  1.  The use of their trademark commenced prior to that of the proprietor or the registered user or,
  2. The date of registration of their trademark is prior to the date of registration of the proprietor’s or the registered user’s trademark.

PRIOR DATE OF REGISTRATION vs. PRIOR ADOPTION AND USE

The question of whether the rights of the prior user of a trademark prevail over the rights of the owner of a registered trademark or vice versais perplexing and significant in the realm of trademark law. In India, courts have recognised and upheld the principle that priority in adoption and use prevails over the priority in registration meaning that the party that first adopts and uses a trademark generally holds superior rights to that mark.

In Neon Laboratories Ltd. v. Medical Technologies and ors., the Appellant-Defendant applied for registration of their trademark on 19 October, 1992 and received the registration of the same on 14 September, 2001 but did not start marketing their products under the trademark ‘ROFOL’ until 2004.On the other hand, the Respondent-Plaintiffs became the owner of the trademark ‘PROFOL’ in the year 2000 after amalgamating with their predecessor-in-titlewho had applied for registration of the trademark ‘PROFOL’ in the year 1998 and received the registration of the trademark in the same year. The Hon’ble Supreme Court held that a prima facie case lied in favour of the Respondent-Defendants because they had been using the trademark long before any user by Appellant-Defendants commenced. In this way, the Apex Court gave primacy to the rights of the prior user.

SETTLED POSITION OF LAW

L.D. Malhotra Industries v. Ropi Industries: In this case, both Ropi Industries and Malhotra Industries were engaged in the business of manufacturing dress hooks. The Ropis were using the mark KISMAT since 01/04/1963 but did not make an application for registration of the mark until December, 1969. Meanwhile, the Malhotras had got the mark KISMAT registered in December, 1967. It was held that the Ropis were first in the field because the priority in adoption and use of a trademark is superior to priority in registration.

S. Syed Mohiden v. P. Sulochana Bai: The Apex Courtin this case reaffirmed the view that the rights of a prior user will take precedence over the rights of a subsequent user even if they have received registration of their trademark.

Ecolab Inc. v. Eaco Labs Ltd.: The Hon’ble Supreme Court observed that the plaintiff had adopted and used the trademark ECOLAB prior to the date of adoption and the user of the defendant. Therefore, the Apex Court observed that the defendant was incorrect in saying that it was the earlier user of the trademark and was the proprietor of the same. The plea of the defendant was not accepted.

Wockhardt Limited v. Dua Pharmaceutical Pvt. Ltd.: In this case, the Hon’ble Delhi High Court ruled in favour of the Plaintiff in view of the prior adoption and use of the mark SPASMO PROXYVON by the Plaintiff since the year 1977. The Plaintiff had its trademark registeredon 4th August, 1977. Later on, it came to the attention of the Plaintiff that the Defendant had subsequently adopted a deceptively similar mark,SPASMA PROXY-N.

Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad: The Hon’ble Delhi High Court asserted in this case that the appellant had to prove that it had been using the mark earlier than the Respondents' impugned usage. The mere existence of the mark in the register kept by the trade mark registry did not prove its user by the persons in whose names the mark was registered.

 

CONCLUSION

In conclusion, it is safe to say that Indian Courts have time and again reasserted and reaffirmed the principle that in case of identical or similar trademarks, the rights of the prior user of a trademark will prevail over the rights of the subsequent user even if the subsequent user has obtained registration of the trademark.

REFERENCES

  1. L.D. Malhotra Industries v. Ropi Industries, 1975 SCC OnLine Del 172
  2. Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672
  3. Ecolab Inc. v. Eaco Labs Ltd., 2011 SCC OnLine Del 5054
  4. Wockhardt Limited v. Dua Pharmaceutical Pvt. Ltd., 1997 SCC OnLine Del 864
  5. Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, 2014 SCC OnLine Del 2727

Khurana and Khurana, Advocates and IP Attorneys



About the Firm

Khurana and Khurana, Advocates and IP Attorneys

AddressD-45, UPSIDC, Site IV, Kasna Road, Greater Noida - 201308, National Capital Region, India
Tel91-120-313 2513, 91-120-350 5740
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Contact PersonTarun Khurana
Emailinfo@khuranaandkhurana.com
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