Prior use of Trademark

The all-around settled precept of the trademark law specifies that the privilege of prior user of the mark will win over the next user of the trademark in relation to the same or comparable merchandise or administrations and despite the fact that the client is the registered owner of the brand name.

To prove the ownership for a trademark, it is necessary for the applicant to prove prior usage of the mark.

The principle of prior use in adoption and usage of the mark, prevails over priority in registration, and holds great importance in specific situations. It is an all-around acknowledged legal rule that the privileges of a prior user of the mark are kept on a higher platform than even that of the owner of an existing brand name. Prior user’s privileges will supersede those of the new applicant proving disadvantageous to the earlier registered holder, despite the fact that the resulting client had been concurred enlistment of its brand name.

In a recent case which builds up a comparative lawful suggestion is the situation of Neon Laboratories Ltd. v. Clinical Technologies Ltd. and Ors., wherein the Supreme Court thought that an enlisted owner of a brand name doesn’t have the option to forestall use by another gathering of an indistinguishable imprint if that utilization started preceding the utilization of the enrolled mark.

Now what are the statutory provisions for this?

Section 34 of the Trademark act 1999 provides that “the proprietor of registered trademark or a registered user cannot interfere with the use of any identical or similar mark if the person has been using the mark from an earlier date”. This is the rule of first user given under section 34 of our trademark act”.

While Section 28 gives a full right on the registered holder, of a mark to utilize the imprint and furthermore to restrict others from utilizing a deceptively similar mark.

One of its exemption is articulated under Section 34 of the Act. This section offers rights to a new applicant, when he/she is using the mark, before the registered user and preceding the date of enrollment of the owner of the mark, whichever is prior.

Sec 34 of the Trade Marks Act, 1999 commands that the registered user of a trademark cannot interfere with the usage of an indistinguishable exchange mark by a new applicant who has been consistently utilizing the imprint from a date prior to that of the mark of the registered trademark holder.

  • To the utilization of the first mentioned mark regard of the equivalent or comparable products or administrations or
  • To the date of enlistment of the primary referenced trademark regard of the equivalent or comparable products or administrations.

Requirements of Prior Use:

(1) The usage of a trademark, indistinguishable or almost looking like the enlisted mark, by a third party should be comparable to the merchandise and ventures for which the first mentioned mark is enrolled;

(2) The utilization should be a consistent utilization of the brand name in India.

(3) The brand name should be consistently utilized by the owner in order to get the protection.

(4) The mark must have been utilized from a date prior, before the utilization of the registered trademark or the date of enlistment whichever is prior.

Will the prior user’s right prevail over the registered mark?

Yes, a number of judicial decisions have proved that a prior user’s right will prevail over the rights of a registered trademark owner. It is a well settled fact that if a prior user has rights considerably over a later enlisted client and no activity lies against a prior user of the brand name in a passing off activity, it will prove disadvantageous to the registered trademark.

It is a very much settled rule of Trademark Law, that prior use of the merchandise will evade the rights of the registered trademark holder, despite the fact that registered holder has an enrolled brand name. The rights enjoyed by registration of brand name is dependent upon the privileges of the prior-usage of the mark.

In a new case, the Supreme Court on account of S. Syed Mohideen v P. Sulochana Bai, had held that the Trademark Act provides privileges to the prior-user, which are perceived to be predominant than that of the registered user and even the registered owner cannot meddle with the privileges of the prior-user.

Trans border:

On the off chance that the owner guaranteeing prior use outside India has a goodwill in India, at that point he can depend on that reputation, if his standing is sufficiently able to negate that of the other owner in India.

The owner needs to convince the Court about his trans-border reputation and this can only be done if he can guarantee a forerunner or simultaneous usage in the locale of India which might be the situation in the event that he has clients here in India who relates the item under the concerned mark.

The High Court of Delhi, in lieu of Section 34 of the Trademark Act, 1999 decided on the earlier utilization of the trademark by the Defendant outside India, in the case of Lowenbrau AG and Ors. v. Jagpin Breweries Ltd. It was held that all things considered, both the parties were unfamiliar organizations and the both of them were using the mark, in the said case everywhere in the world and needed to extend in India and in these conditions the situation as it exists abroad, and usage of the mark abroad were held to be significant as far as Section 34 of the Act.

Passing off

The basic principle behind the tort of passing off is “A man is not to sell his goods under the condition that they are the goods of another man”

Passing off applies to an unapproved usage of a brand name which is viewed as of comparable nature corresponding to same merchandise as well as administrations and happens in the event of an unregistered trademark. Hence, passing off happens when an indistinguishable brand name is utilized by an individual other than the earlier client corresponding to comparative merchandise or benefits and is expected to create consumer confusion tarnish the goodwill of the prior-user.

As specified under Section 27 of the Act, the common law rights command the brand name proprietor to make a move against any individual for passing off their products or administrations look like the merchandise or administrations of someone else.

Having said this, in a landmark case, the applicants claimed to have received the trade mark TOOFAN (Device) in the year 1987. He documented an application for enlistment of the imprint TOOFAN (Device) which was allowed enrollment in in the year, 2012. The respondent applied for registration of the trademark SNJ TOOFAN guaranteeing use since the year 2016. The Hon’ble High Court of Calcutta, saw that after examination of the two marks in question and nature of merchandise the brand name SNJ TOOFAN of the respondents shows up misleadingly like the enrolled brand name TOOFAN of the applicants. It was additionally settled that the respondent is trying to pass off his products look like that of the applicants and resultantly a request for order was passed for the candidates.


Thus, the prior-user, rule in the trademark law is a fundamental piece of the Act and it has consistently been used as a ground to register marks that are been used prior to that of the registered mark. The owner of a prior user by utilizing and making known the mark or get up corresponding to his merchandise and along these lines making it be related or related to those products will procure a semi-restrictive right to the selective utilization of the mark and attack of this privilege by any individual who by utilizing the equivalent or some misleadingly comparative imprint and inciting the clients to purchase from him products not of the owner of an prior-user as his own sums to infringement.

Our nation recognizes the customary law rights as per which unregistered brand names with prior use are secured against passing off.

Our nation recognizes the concept of prior use for trans-border trademarks too. Trans border reputation has been acknowledged and perceived in India in any event when the goods/services pertaining to the mark are not being promoted and sold in India. Each case is judged on the basis of benefits and genuineness of the mark.

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Bharat Sharma

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