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This article is written by Anshal Dhiman. The article talks about the doctrine of prior use under Trademark Law.


The doctrine of prior use is one confusing concept. Different countries have different trademark laws that regulate the registration and use of trademarks. Trademark is one component of intellectual property rights, and in modern times where governments and individuals around the world are promoting the safe use of intellectual property rights so that the original creators don’t suffer from some other people stealing their content. A trade mark is a sign equipped for recognizing the products or administrations of one undertaking from those of different ventures. Trademarks are ensured by protected innovation rights.

In such a time, protection of trademarks is automatically an important issue that may arise under intellectual property rights matters. ‘Prior use prevails’ is the concept that is prevalent in most countries in the modern times, relating to trade marks. Courts have faced different cases with the same issue, who should get to use the trademark, the one who registered first or the one who used it first. The article will study about Indian Trade Marks act and section 34, and the doctrine related to it.

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Indian Trademark Law

Indian trademark law is not as old as many other laws in the country. In fact, before 1940 there was no trademark law in India. During this period, the issues related to trademarks were dealt as under Specific Relief Act, 1877 and Indian Registration Act, 1908. But of course, the lack of a definite law was realized by the government at that time and it was observed that the country needs a  trademark law. The first trademark specific law in India was enacted in 1940, the Indian trademarks act. The Act was enacted to cover all the problems and issues that arose in matters relating to trademarks. 

This act was also important because trademarks were growing very well and the trade and commerce was developing very well in the country. The Act roughly managed to cover trademark issues. But it had to be replaced within 2 decades of its enforcement as it got outpaced by the fast growth in the market. The Act was replaced by the Trademark and merchandise Act of 1958. This act was enacted to cover more issues under trademarks. It prevented misuse of and fraud use of trademarks, which the previous Act did not manage to cover. But this Act again was found lacking soon after some years, when Indian economy grew very dynamically and the concept of intellectual property rights and trademark particularly became prevalent among the major governments of the world. 

At the same time the TRIPS (Trade Related aspects of Intellectual Property Rights) agreement was signed with India as part of it. Following this, India enacted a new trade mark law, which was on terms with the TRIPs agreement as was asked by the World Trade Organization. The Trademark Act 1999 covers many aspects of trademark intellectual property rights, but still, there are cases where common law provisions and precedents are taken into consideration rather than the coded Indian law. 

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Section 34 of the Indian Trademark Act, 1999

The section 34 of the Indian trademark act protects the rights of owners of a trademark who have not registered their trademark but are using it before anyone else for a period of time.  The section says that no provision of the Act shall let any registered trademark owner violate any right of a person who has been using any such similar trademark for a period of time prior to the date of first use of the later trademark or the registration of the new trademark. This states that an owner of an exchange mark doesn’t reserve the privilege to forestall the utilization by another gathering of an indistinguishable or comparable imprint where that user started preceding the user or date of enlistment of the owner. This is usually alluded to as a “First user” rule which is an original piece of the Trade Marks Act. Fundamentals of this provision are:

(1) The utilization of an imprint indistinguishable or almost taking after the enrolled mark, by a third individual, should be corresponding to the products and enterprises for which the principal referenced imprint is enlisted;

(2) The utilization should be a constant utilisation of the trademark in India;

(3) The trademark should be utilised by the owner to profit the assurance;

(4) The imprint has probably been utilized from a date before the utilisation of the enrolled trademark or the date of enlistment whichever is prior.

The inquiry emerges nonetheless, with respect to the legitimate situation of a gathering that has utilised an unregistered trademark from a date foremost to the date of use for the enlistment of a similar trademark by another. Should the gathering who applied for, and got enlistment of the applicable trademark actually be the select proprietor of that mark? Should such a trademark owner have the option to forestall the earlier user of the imprint from making further use thereof? Should the earlier users of the imprint be in a situation to have a problem with and/or drop the enlistment of the important imprint by another? These inquiries are not scholarly. There is a genuine danger to both the users of unregistered brand names and the proprietors of some brand name enlistments that their privileges to utilize their individual imprints might be restricted or even dropped.

“Use” has a terrifically significant influence. ‘Use’ under section 34 of the law commands the thought of ceaseless use and is not discontinuous and inconsistent in nature. Who has first utilized the imprint or name is frequently a contested inquiry of actuality. 

The safeguard accessible to an earlier user under section 34 of the law, whenever permitted, has the impact of weakening the assurance conceded to an enlisted mark. Consequently, the foundation of prerequisites under section 34 requires pertinent materials showing earlier use. There must be a strong exhibition of the imprint being utilized regarding the merchandise and enterprises for which the enlisted mark is additionally being utilized. For instance, the Revelation of marketing projections is an apt material to build up a consistent course of utilization of the imprint preceding the date on which the enrolled user started utilization of the imprint.

In the case of Peps Industries Private Limited vs. Kurlon Limited, the High Court of Delhi talked about the scope of section 34 and if it can be used as a defence, while also discussing descriptive trademarks. Via this suit under the steady gaze of the Delhi High Court, the plaintiff party looked for an announcement of lasting order against the respondent from assembling, selling, offering available to be purchased, publicizing, offering types of assistance straightforwardly or in a roundabout way managing in merchandise and enterprises under the enlisted mark ‘NO TURN’ or in any way utilizing the plaintiff enrolled mark ‘No Turn’ or whatever other brand name which is misleadingly comparative thereto, adding up to encroachment, making the litigant’s business look like that of the offended party or bringing about weakening and discolouration of offended party’s enlisted brand name. What’s more, the respondent thus took the guard that it was the earlier user of the Brand name ‘NO TURN’.

The Hon’ble Court held that it is obvious that that the plaintiff has an enrolled trademark and the imprint ‘NO TURN’ is being utilized by the plaintiff as a trademark. The Court additionally saw that the respondent is the earlier user of the imprint since the year 2007, notwithstanding, since the utilisation of the imprint by the respondent is irregular and not voluminous to set up the protection under section 34 of the Act. Notwithstanding, the Court held that the plaintiff would in any case not be qualified for the injunction for the explanation the imprint ‘NO TURN’ is an expressive imprint and that the plaintiff had not set any material on record to show that on the date of use or even on the date of enrollment plaintiff’s brand name had gained the uniqueness to accomplish the situation with a notable imprint.

In another case, M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited, the Delhi High court again revisited the doctrine of the prior user of a trademark under section 34 and revised the law that prior user will get priority over the later user in the matters of trademark, even if the prior user has not registered the trademark. The moment case was initiated by one, Rajeev Kumar who professed to be the sole owner of M/s. R.J. Parts and Shafts (Plaintiff Company) against the Defendants to limit them from in any way utilizing the Plaintiff’s enlisted brand name NAW. The Plaintiff Company is occupied with the matter of assembling and promoting of bury alia ‘gears’ being farm hauler leaves behind regard to products falling under Class 12. The Plaintiff battled that its business is grounded and the reproved brand name NAW is a notable brand name and throughout the long term its image has accumulated bountiful altruism and notoriety in the exchange. Rajeev Kumar further battled that at first his granddad to be specific, Ramji Das was the sole owner of the Plaintiff Company and vide a deed of task in the year 2000 Ramji Das appointed all rights, title and interest of the brand name NAW in the assignor. He additionally battled that according to the deed of the task, he turned into the enlisted owner of the imprint NAW and after the demise of his granddad the contested imprint was being utilized by him.

The Court expressed that despite a few chances the Plaintiff had neglected to deliver any proof and no believable proof had been illustrated to gather that the brand name NAW was enrolled for the sake of Ramji Das was at any point utilized by him or was alloted to Rajeev Kumar. Also, no proof had been delivered by the plaintiff to dispute the defendants’ declaration that they were earlier users of the imprint NAW since 1971. The Court also said that regardless of a couple of chances the plaintiff had failed to convey any verification and no authentic evidence had been represented to suspect that the brand name NAW was enlisted for Ramji Das was anytime used by him or was alloted to Rajeev Kumar. Additionally, no verification had been conveyed by Plaintiff to question the Defendants’ presentation that they were prior users of the engraving NAW since 1971. As expressed before, the Delhi High Court for this situation perceived the earlier user directly as the better right which likewise beats the enrolled owner of a comparable or indistinguishable brand name, considering the previously mentioned realities, the Delhi High Court ordered an injunction against the Plaintiff from utilizing the imprint NAW.


The modern Trademark Law of the country is in compliance with the TRIPs agreement and is intended to protect the rights of the owners of trademark and brand names. Section 34 of the Indian Trade Mark Act talks about the doctrine of prior use. In the article, it is studied how the doctrine is applicable in Indian practice and how the courts have interpreted the law as has been faced by them. The first user rule is an original piece of the Act and it has consistently appreciated pre-greatness. The owner of an earlier user, by utilizing and spreading the word about the stamp or get up comparable to his merchandise, and along these lines making it be related or related to those products, will secure a semi restrictive right to the selective utilization of the imprint and intrusion of this privilege by any individual who, by utilizing the equivalent or some misleadingly comparative imprint and initiating the users to purchase from his merchandise, not of the owner of an earlier user as his own adds up to encroachment.


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