Prior User Vs. Prior Registration in Trademarks

Prior User prevails over Prior Registration

Ms. Thabitha Marion Varghese

Section 34 of the Trademarks Act, 1999 deals with prior users and their rights. The exclusive right obtained by registration cannot be used against the rights of prior users of the same or similar trademarks. The prior users get the right to be protected only on the fulfillment of certain conditions. Firstly the mark should have been used from a date prior to the use of the registered trademark, or prior to the date of registration, whichever is earlier. Secondly the prior user claimed must be by the proprietor himself or by his predecessor in title. And thirdly the user claimed must be continuous. On the fulfillment of these conditions the registered proprietor cannot interfere with or restrain the use of a similar mark by the person who claims prior use. The Registrar cannot refuse registration of the prior mark because of the existence of the registered trademark on the register. It is not sufficient to plead user prior to registration simplicitor. The prior user must show that they were substantial users and user prior to the application for registration. Section 34 can be taken as a defence in an infringement suit. This Section cannot be applied to obtain an injunction restraining the registered proprietor from interfering with the right of the prior user to use the trademark.

It is a well settled proposition of law that prior user of a trademark is accorded preference than a subsequent registrant. The impact and importance of prior user is reflective in Titan Industries Ltd. v. Registrar of Trademarks , where the second respondent filed an application for registering trademark ‘Classic’ in respect of clocks, watches, time pieces and other parts included in Class 14 claiming usage since 1987. But when the application was advertised in the Trademark Journal, Appellants filed their notice of opposition on the grounds that they are manufactures and dealers of wrist watches and they are the proprietors of ‘Titan’ word per se. They further claim that they are registered proprietors of trademark Titan Classique and that they are popularly known as classique or classic.

The allegation was that the mark sought to be registered by the second respondent is deceptively similar to that of Titan industries and the source of trade channel are also similar and that they are prior user of the mark and hence have valid rights. The second respondent filed counter statement along with a request for amendment of the date of user. The second respondent had earlier claimed user since 1987 in their application and by way of amendment through Form TM-16, they sought to change it. Titan Industries alleged mala fide intentions and contented that it was a dishonest attempt to improve their claim for registration on false and fabricated documents. The Assistant Registrar after hearing the matter, allowed the application on Form TM-16 amendment of date of user. Aggrieved by the said order, appeal was filed before the High Court of Delhi which was transferred to IPAB by virtue of section 100 of Trademarks Act, 1999.

Titan Industries contented that they had registered trademark “Titan Classique” as early as 25/08/1986 and it is also pointed out that the second respondent company was incorporated in the year 1988 only and hence their claim of usage since 10/04/1986 is false and the mala fide intention is explicitly clear. It was also pointed out that the second respondent had kept the mark for more than eleven years and only when the opposition was filed that they sought to amend the date of user with the intention to claim prior user. The arguments raised by Titan Industries were:

• Form TM-16 for amendment of the date of user after the mark was advertised in the Trade Mark Journal was not permissible.

• The amendment would cause undue hardship and prejudice to their rights.

• Their loss cannot be compensated in terms of money.

The IPAB distinguished the cases relied by the second respondent as the facts are different form the case on hand. The IPAB observed that it is clear that the Registrar of Trademark either before or after the acceptance of the application for registration can permit the correction by virtue of section 22 of the Trade and Merchandise Marks Act, 1958. But the Board opined that any amendment, which will materially change the nature of application, should not be allowed. The Board was convinced that the second respondent had proposed the changes at the belated stage with malafide intentions. The Board further ruled that the procedural laws should be intended to facilitate and not to obstruct course of substantive justice. Hence it was held that the application to amend the date of the user, which alters the nature of the application, cannot be allowed. The attempt of second respondent to amend the application so as to enable a prior date proves the importance accorded to ‘prior user’.