Unlike Patents or Designs, the law of Trademarks mandates the
rule of use - the more you use a mark and make it distinctive, the
better chances you have in securing and ultimately defending your
This principle has been reiterated in the recent case of M/s.
HAB Pharmaceuticals & Research Limited v/s.VEE EXCEL DRUGS
& Pharmaceuticals Pvt. Ltd. [ORA/59/2005/TM/DEL] and VEE EXCEL
DRUGS & Pharmaceuticals Pvt. Ltd. v/s. M/s. HAB Pharmaceuticals
& Research Limited [ORA/155/2009/TM/MUM], both of these being
cross rectification applications. [Order No. 169 of 2013].
While ORA 59/2005 was filed by HAB Pharmaceuticals &
Research Limited to remove the mark "VEGA
ASIA" bearing registration number 1079405 in Class 5
belonging to VEE EXCEL DRUGS & Pharmaceuticals Pvt. Ltd. from
the Register; ORA 155/2009 was initiated by VEE EXCEL DRUGS &
Pharmaceuticals Pvt. Ltd. to remove the mark "VEGAH
TABLETS" of HAB Pharmaceuticals & Research
Limited bearing Registration number 1098288 in Class 5 from the
The IPAB decided that in terms of the mark VEGA v/s. VEGA ASIA,
HAB Pharmaceuticals & Research Limited was able to prove usage
for their mark VEGA from 2001 when it first manufactured its tablet
under the trademark on August 17, 2001. VEE EXCEL DRUGS filed the
mark "VEGA ASIA" on February 8, 2002 as
a "proposed to use" application. The drug licence was
obtained on September 12, 2002. Accordingly the IPAB held that the
true use of the mark "VEGA ASIA" could
only have taken place once the drugs were sold. Accordingly the
prior user, being HAB Pharmaceuticals & Research Limited, had
better right and thus the removal of the mark "VEGA ASIA"
However, in ORA 155/2009, HAB Pharmaceuticals & Research
Limited was unable to prove usage of the mark "VEGAH
TABLETS". The application was filed on April 24, 2002
with a user date of April 1, 2002. The usage could not be proved by
way of the documents. The removal of the registration for mark
"VEGAH TABLETS" was accordingly
As evident, both parties lost their respective registrations
only due to their inability to prove prior use. The stand taken by
the IPAB above is in consonance with the practice at the Registry
also. In the context of Trademarks, for the Registry, the user
becomes sacrosanct. This has been dealt with in a plethora of
cases. For example in the case of Titan Industries Limited v/s
Registrar Of Trade Marks And Anr.[2007 (34) PTC 346 IPAB] it has
been held that "..the well settled proposition of law in Trade
Mark law is that the prior user of a trade mark has more valid
rights in a mark than the registered proprietor".
This position is based on Section 34 of the Act which states as
"Section 34. Saving for vested rights.- Nothing in this
Act shall entitle the proprietor or a registered user of registered
trade mark to interfere with or restrain the use by any person of a
trade mark identical with or nearly resembling it in relation to
goods o services in relation to which that person or a predecessor
in title of his has continuously used that trade mark from a date
(a) to the use of the first- mentioned trade mark in relation
to those goods or services be the proprietor or a predecessor in
title of his; or
(b) to the date of registration of the first- mentioned trade
mark in respect of those goods or services in the name of the
proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse
(on such use being proved) to register the second mentioned trade
mark by reason only of the registration of the first- mentioned
The law in India therefore veers towards the concept of prior
user trumping registration. Globally also various countries have
dealt with this in various ways. Whereas the US follows a similar
principle which gives precedence to prior use, France dumped the
user based system in favour of a registration based system. The
argument and the various advantages/disadvantages of each of the
principles are reserved for a later debate.
However, one thing is for certain. A registration without use of
the mark or using the mark but not securing registration, both are
situations which are not ideal for any system. The ideal is the
middle path, wherein the right holders secure their right of a
legitimate and not reverse engineered descriptive mark and there is
a genuine use of the same.
In India, with the coming of the Madrid Protocol, the principle
of prior user will gain even more significance when International
applications and registrations are enforced on the Indian
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