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/administrations, 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 Hon’ble Supreme Court held 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.”

Statutory provisions for prior-use of Trademark

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 of the Act 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.
Section 34 of the Trade Marks Act, 1999 clearly states that the registered user of a trademark cannot interfere with the usage of an indistinguishable trademark by a new applicant who has been consistently using the mark from a date prior to that of the mark of the registered trademark holder.

Requirements to determine Prior-use of trademark

(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.

Can the prior user’s right prevail over the registered user’s right?

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.
The Supreme Court in the case 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 Prior-Use of Trademark:

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 with respect to 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 Trademark Act, the common law rights command the proprietor of the trademark 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 of Shambhu Nath & Brothers and Ors v. Imran Khan, the Applicants claimed to have received the trade mark TOOFAN (Device) in the year 1987. He documented an application for registration of the trademark TOOFAN (Device) which was allowed 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 registered 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.

Conclusion

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 of a mark has the right to sue the registered proprietor of a mark on proving considerable usage.
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.