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Rights Of The Prior User Of A Trademark In India

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Trademarks are unique visual representations that help customers distinguish a product of a manufacturer compared to another. The easiest way to protect the rights to use a particular trademark is to register it with the Registrar of Trade Marks in India. This enables the holder of a registered trademark to sue any business who imitates the mark for infringement. That being said, it is not just the registered marks that are protected in India. There are numerous trademarks in India used by businesses that are not registered, but enjoy goodwill and reputation in the minds of customers. The genuine interests of those businesses need to be protected from being violated by other traders whether registered or not. Let us examine the rights available to a trader who has been using a particular trademark for a while. What would happen if another business registers it in their name?

Rights Of A Prior User Of A Trademark In India

It may be safely concluded that the prior user of a trademark has priority over a subsequent user even if the subsequent user has the trademark registered legally.

Once it is proven that a trademark has been in use by another business, the other applicant more or less forfeits the right to use the trademark. It is a big risk to proceed with the registration of a mark already in use even if it has not been registered yet.

What Does The Statute Say?

Section 34 of the Trade Marks Act says that the proprietor or a registered user of a registered trademark cannot interfere with the use of any similar or identical mark if the other proprietor has been using the mark from an earlier date. This section underlines the unbreachable rights of a prior user of a trademark. What matters here is the honest and bonafide use of a mark by a proprietor who may not have registered it.

Cogent Evidence

Whether there has been a prior use by a proprietor is a question of fact. There is a need for producing cogent or factual evidence in order to prove prior use. It may be production of books of registration, accounts, invoices or any other details that help in proving the prior use of a trademark by a proprietor.

What Are The Requirements For Action Under Prior Use?

Given below are the requirements to be fulfilled if prior use needs to be considered against a trademark registered in India –

  1. The trademark may be identical or similar to the subsequent mark registered.
  2. The trademark must be used in the particular class of goods as the subsequently registered mark. If it belongs to a different class, there would be a need to apply other provisions such as being a reputed mark in India and the use would be detrimental to the goodwill of the prior user.
  3. The prior use should pertain to a trademark in the territory of India. Prior use in other lands cannot be considered against a trademark registered in India.
  4. There must be a continuous use of the trademark. In other words, the use should not be of temporary nature. It is essential that the trademark should have some reputation and association with a particular proprietor.
  5. The usage of the trademark must be before the date of the registration or use of the trademark whose registration is in question.

Noteworthy Case Laws

Nandhini Deluxe v. Nandhini

When well known restaurant chain Nandhini Deluxe applied for a trademark registration under class 29, it was opposed by M/s Nandhini who was involved in a similar business in the same city Bangalore. It was claimed that Nandhini had been using the trademark since 1999. Both the trademarks were visually similar with the logo of a lamp. However, in a counter statement, Nandhini Deluxe claimed that it had been in the business of Andhra style food since 1989. Thus, based on evidences provided, Nandhini Deluxe was allowed the registration of the trademark on account of prior usage.

Kamat Hotels (India) Limited versus Royal Orchid Hotels Limited & Anr.

Royal Orchid Hotels were prevented from using the name ‘The Orchid’ for a new hotel project by their group. The reason was that the name was already a registered trademark of Kamat Hotels since 1997. Though Royal Orchid Hotels tried to show prior use, they were unable to provide Cogent evidence to show prior use.

Trademark Registration At

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17 Nov, 16

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