THE DOCTRINE OF PRIOR USE UNDER THE INDIAN TRADEMARK ACT

Trademark Jun 19, 2021 0 Add to Reading List

Introduction

Trademark is an important tool for communication of identity of the brand and in turn, shows positive impact on the sales. Trademark gives an exclusive right to the innovator and holds many advantages to its owner. Indian Trademark Law follows the principle “first-to-use”. The one who uses the trademark first will be the creator or the owner. The doctrine of prior use states that the prior user of the trademark has superior and exclusive rights over the registrar proprietor. It’s a judicial principle wherein the use of the rights of the prior user of the mark prevails over the registered proprietor who claims for the mark.

Provisions under Indian Trademark Act, 1999

According to Section 28 of the Indian Trademark Act, it gives an exclusive right to use of trademark if registered for the trade activities, but one of its exceptions is codified under Section 34 of the Indian Trademark Act. It says that nothing shall violate the rights of the actual owner on the mark similar or identical to the trademark that has been registered by a proprietor. So, this Act protects the rights of the original owner who has not registered but such mark has been in use prior to the registered date of the proprietor. However, Section 34 has some exceptions to it, especially in relation to the trans-border reputation.

When it comes to the interpretation of the word “Prior use,” the court held that it refers to the use of the mark within India and not abroad. According to Section 47(b) of the Act, it says if the trademark has not been in continuous use for a term of 5 years from the date of registration of a trademark the registrar can remove it when a third party claims.

Fundamental requisites of this provision

The use of the mark which is similar or nearly resembling the registered trademark by the third individual must be corresponding to the goods and services or enterprises for which the first mark is registered.
The use of the mark must be constant and continuous in India.
The trademark must be used to get protection.
Such mark should be used prior to the date of registration or prior to the use of the registered trademark.

The term use has been clearly interpreted in the case “Hardie Trading vs. Addison paint and chemicals,” wherein the court held that the term usage of a trademark is not limited to the physical use of the goods.

There is an exception to the rule “first-to-use” specified in the judgment of NR Dongre vs. whirlpool and Ors, which is the doctrine of Recognition of well-known trademarks. There are some cases that give clear interpretation of the term “Prior use.”

Peps Industries Private Limited vs. Kurlon Limited

In this case, the plaintiff is the owner of the Registered trademark “NO TURN.” The plaintiff registered the mark under class 20 in the year 2008, whose products include mattresses, pillows, cushions, sofas and so on. The mark has got the registration granted in the year 2011 with effect from the year 2008. The plaintiff has been continuously using the mark uninterruptedly from the year 2008. In the month of August 2018, the defendant alleged the plaintiff had been dishonestly using his trademark, and the defendant is the earlier user of the mark since 2007.

The case involves two issues whether the defendant is a prior user of the mark and is entitled to protection and the other issue is if the defendant will be given protection under the Act.

It was held that the mark “NO TURN” has been registered by the plaintiff, and there is proper evidence to prove that. The plaintiff has it in continuous use since 2008. However, the defendant is the user of the mark since 2007, but the defendant is not a continuous user, intermittent, and is not voluminous to get the defence under Section 34 of the Indian Trademark Act. The plaintiff will not be entitled to an injunction because the mark is descriptive “NO TURN,” and in addition, the plaintiff did not submit any record to show the date of registration of the trademark “NO TURN.” Hence no interim has been granted.

M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited

In this case, the Rajeev Kumar claims that he is the sole proprietor of M/s R.J. Components and Shafts and to refrain the defendants from using the trademark “NAW”. Plaintiff’s company runs a business related to the manufacture and marketing of goods falling under class 12. The plaintiff also stated that the company is deep-seated and reputed with goodwill. He also stated that the trademark of that company, “NAW,” is well known. He further stated that his grandfather who is the sole proprietor of the company, assigned title, and rights in the deed of assignment. After the death of his grandfather, the trademark is being used by him.

The plaintiff claimed that the defendant has been running the business related to gears and has been using the similar mark “NAW.” To the reply of that, the defendants stated that the plaintiff is not the subsequent proprietor as his name has not been entered in the trademark registry. Therefore, he is not entitled to acquire the trademark. The defendant also added that the plaintiff and his grandfather acquired the trademark fraudulently, and they were already aware that the trademark is being used by the defendants. They have also added that the trademark “NAW” has been used since 1971 by the manufacturing unit Ms. New Allenberry Works and the letters “NAW” have been coined from this title.

In this case the Delhi High Court held that the prior user is superior right over the registered proprietor for identical trademarks. The judgment is made from the observations stating that the petitioner though he has been given several opportunities he did not produce any credible evidence. The court also observes that the defendant has been using the trademark since 1971 with evidentiary documents. So, the defendant is the prior user of the trademark.

Conclusion

Section 34 of the Indian Trademark Act clearly talks about the Prior use. The first to use will be the superior rights over the registered proprietor, and no action can be done against the prior user. It is advisable for the entrepreneur, before registering any trademark, to check if there are any similar or identical trademarks before registering to avoid any problems. The trademark must be in continuous usage in any form with respect to the goods and services. The owner can promote it in all media possible, which in turn helps in the protection of the trademark.

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BY Purimetla