India: Eight Months Use Of A Mark Prior To Application –Claim Of Concurrent Use Not Valid

Last Updated: 27 July 2007
Article by Manisha Singh Nair

The case of Needle Industries (India) Ltd. v. Super Thread Industries & Ors 2007 (34) PTC 614 (IPAB) started when Super Thread Industries/Respondents filed an application in 1988 for registration of the mark "PONY" in class 23 in respect of yarns and threads. After examination the application was advertised before acceptance in 1997. Needle Industries/Appellants filed their notice of opposition objecting the registration under the provisions of Section 9, 11, 12, and 18 of the erstwhile Trade and Merchandise Marks Act, 1958.

After completion of opposition procedure, the Assistant Registrar of Trademarks set down the matter for hearing and found that the objections raised by Needle Industries were baseless. The Assistant Registrar did not considered Needle Industries’ registration of the impugned mark in Class 26 since 1971 and held that since Needle Industry’s application in Class 23, was pending registration wherein Needle Industries had claimed user only since 1995 that was subsequent to user of Super Thread, therefore, Needle Industries had no locus standi to raise the objections. The Assistant Registrar further held that as Super Industries being a genuine owner and prior user of the impugned mark, was entitled to have the mark registered in their name. However, based on the documents on record, the Assistant Registrar held that Needle Industries had acquired distinctiveness in the trademark "PONY" for the goods covered under Class 26 but also expressed his views that the distinctiveness acquired for goods in Class 26 cannot be availed for the goods in Class 23.

Aggrieved by the Order of the Assistant Registrar, Needle Industries preferred a statutory appeal before the Delhi High Court in the year 2000. Pending the disposal of appeal by the High Court, on 15th September 2003, the Trade Marks Act, 1999 repealed the Trade and Merchandise Marks Act, 1958. By virtue of section 100 of the new Trademarks Act, 1999, all cases of appeals against any order or decisions of the Registrar of Trademarks, pending before any High Court were transferred to the newly constituted Intellectual Property Appellate Board (IPAB). Accordingly, Needle Industries’ appeal against the Order of the Assistant Registrar was also transferred and heard by IPAB in 2006 during a Circuit hearing at New Delhi.


Needle Industries contented before IPAB that they had adopted and using the impugned mark "PONY" with the "PONY" device since 1963 and having registration of the said mark in Class 26 since 1971. Needle Industries also pointed out towards the affidavits filed by Super Thread claiming their adoption of the impugned mark only since 1987. It was also contended by Needle Industry that the impugned trademark had acquired distinctiveness in their favor by long use on the goods covered under Class 26. Further contention was raised that the goods falling in Class 23 and 26 were allied and cognate and the trade channel and consumers were one and the same. Accordingly, use of an identical mark by Super Thread in respect of allied and cognate goods in Class 23 would certainly cause confusion and deception. The reliance was placed the decision in Needle Industries (India) Ltd. v. Sanjay Jaiswal & Ors, 2002 (24) PTC 646 (DB) where it was held that deception and confusion was not a probability but was a certainty if the trade channels were similar even if the class of goods were different.

On the other hand Super Threads submitted that the impugned mark "PONY" was honestly adopted by them in respect of goods covered under Class 23 and that they had been using the mark since 1987 and applied for registration in 1988. They also contented that Needle Industries had not placed on record any evidence to prove that they had been using the mark since 1967. Super Thread countered the argument of Needle Industries was placing reliance on the decision in United Brothers v. United Traders 1997 (17) PTC 603 where it was held that the goods though were sold from the same counter but if they fell in different classes the question of deception or confusion did not arise.


After hearing the arguments of both parties, IPAB held that in order to qualify for registration, the mark should be distinctive and if not distinctive should be capable of distinguishing the goods of one from others. IPAB concluded that Super Thread had no capacity to acquire distinctiveness by using the impugned mark only for a period of eight months prior to the application. In order to acquire distinctiveness the mark should be in use for a considerable period of time. The IPAB further held that as the goods are sold from the same counter, there was every possibility of causing confusion and deception. With regard to honest concurrent use, the IPAB found that in view of the use of impugned mark by Needle Industries since 1967 in respect of Class 26 goods, Super Thread’s eight months use prior to their application could not be considered as honest concurrent use. On perusal of the documents, IPAB also found that the adoption of the impugned mark by Super Thread was not honest and bona fide. Accordingly, IPAB held that dishonesty itself disentitles Super Thread from the benefit of the claim of honest concurrent use. Otherwise also the IPAB held that the impugned mark had not acquired any distinctiveness to be claimed by Super Thread and thus, allowed the appeal.

© Lex Orbis 2007

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.