What happens if you apply for a trademark application and get
trademark registration, but later find that someone else has
been using that same trademark since before you had filed?
Well, the principle of "Priority in adoption and use
prevails over priority in registration" holds good in this
context. It is a well accepted judicial principle that the rights
of a prior user of the mark are kept on a higher pedestal than even
that of the proprietor of a registered trademark. Prior user's
rights will override those of a subsequent user even though the
subsequent user had been accorded registration of its
According to Section 34 of the Trademarks Act, 1999 "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".
The section provides for protecting the vested rights preventing
a proprietor or registered user of a trademark from interfering
with the honest use of an identical trademark or a mark nearly
resembling with the registered mark.
What are the fundamental requirements for the acknowledgement
of "Prior Use"?
Acknowledgement of "Prior Use" constitutes the
(1) the use of a mark identical or nearly resembling the
registered mark, by a third person, must be in relation to the
goods and services for which the first-mentioned mark is
(2) the use must be a continuous use of the trademark in
(3) the trademark must be used by the proprietor in order to
avail the protection;
(4) the mark must have been used from a date prior to the use of
the registered trademark or the date of registration whichever is
Does "Prior Use" acts as an affirmative defense in
Trademark Infringement Disputes?
"Use" plays an all important part. 'Use' under
Section 34 of the Act mandates notion of continuous use and not
intermittent and sporadic in nature.
Who has first used the mark or name is often a disputed question
The defense available to a prior user under sec 34 of the Act,
if allowed has the effect of diluting the protection granted to a
registered mark. Therefore, establishment of requirements under
Section 34 necessitates cogent materials indicating prior use.
There has to be a forceful demonstration of the mark being used in
connection with the goods and services for which the registered
mark is also being used. For example, Disclosure of sales figures
is a cogent material to establish a continuous course of use of the
mark prior to the date on which the registered user commenced use
of the mark.
Do rights Of Prior User of Trademark prevail over Prior
Registration of Trademark?
By catena of judicial decisions, it is now settled that a prior
user of a trademark has rights even over a later registered user
and no action lies against a prior user of the trademark in a
passing off action.
Hence, "first user" rule is a seminal part of the Act
and it has always enjoyed pre-eminence. The proprietor of a prior
user, by using and making known the mark or get up in relation to
his goods, and thus causing it to be associated or identified with
those goods, will acquire a quasi-proprietary right to the
exclusive use of the mark and invasion of this right by any person
who, by using the same or some deceptively similar mark and
inducing the customers to buy from him goods not of the proprietor
of a prior user as his own amounts to infringement.
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.
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