The Delhi High Court is hearing the dispute between TTK Prestige Ltd. and KK & Company Delhi Pvt Ltd. & Ors. regarding the infringement of TTK Prestige's trademark and passing off of their products by KK & Company Delhi Pvt Ltd. and other defendants.1
A lawsuit was filed by TTK Prestige Ltd against KK & Company Delhi Pvt Ltd and other defendants for trademark infringement and passing off products as those of TTK Prestige. Since 1955, TTK Prestige has been using the "Prestige" trademark, which it registered under the Indian Trademark Act. TTK Prestige asserts that KK & Company Delhi Pvt Ltd's sale of kitchen appliances under the name "Prestige Kitchenware" is leading to consumer confusion and a decline in sales. The plaintiff had a lawsuit seeking a decree of permanent injunction against the defendant, a company that deals in "gas stoves," had been filed. However, the defendant countered that they have been using the mark since 1981. The Court, however, believed that the defendant had only demonstrated sporadic use of the contested trademark, which prevented it from being considered a "continuous user" under section 34 of the Trademarks Act.2
Sporadic use of trademark and interrelation with Section 34.
The owner of a registered trade mark is granted the right to use it exclusively under Section 28 of the Trade Marks Act of 1999 (hereinafter referred to as the "Act"). The right granted by Section 28 is subject to the vested rights of the person who has used the same mark in connection with the same goods or services for which the mark is later registered by the other person, as is made clear by a simple reading of Section 34 of the Act.3 The defendant, in the Court's opinion, has only shown sporadic use of the contested trademark, which does not meet the definition of "continuous user" under section 34 of the Trademarks Act. The court noted that the defendant's use of the trademark "PRESTIGE" in connection with "gas stoves" is likely to cause confusion in the market because the general public would mistakenly link the defendant's products with those of the plaintiff, and the plaintiff has established a prima facie case of trademark infringement as well as passing off.4
It will be useful to comprehend the history of Section 34 before we delve into its design. Before the first Trade Marks Act in England was passed in 1875, any trader could acquire rights in a distinctive mark by simply using it in connection with his goods during the course of his trade, according to the Bombay High Court in Sunder Parmanand Lalwani v. Caltex (India) Ltd.5 This right would be protected by the law, and the said trader would have the right to file a lawsuit in court to obtain an injunction to prevent any infringement of his mark rights. According to the law, "registration" was only one way to become the owner of a mark; it had no legal bearing on a person who had obtained ownership of the same mark through "prior usage."
In this direction, the case of peps industries pvt. Limited v/s Kurlon limited helps us to understand to use the defence of continuous use. The case of Peps Industries Pvt. Ltd. v. Kurlon Ltd. involved a request for a permanent injunction barring the defendant from using the plaintiff's registered trademark "NO TURN." The defendant asserted ownership as the first user of the trademark "NO TURN."6 The court in this case had to determine whether the defendant was, in fact, the original user of the mark "NO TURN" among other things. The court found that even though a registered trademark owner's rights are exclusive, they are not in any way unqualified because they are subject to a number of legal provisions. The court further determined that even though the defendant has been using the mark intermittently since 2007, this does not constitute prior use as defined by section 34. Additionally, there weren't a lot of sales. The defendant cannot invoke Section 34 because there was no evidence of continuous use of the mark "NO TURN" by the defendant. The court simply stated that even though the defendant was the mark's initial user, use of the mark since 2007 has been sporadic and not extensive. As a result, Section 34 does not permit the defendant to assert the defence.
In Kamat Hotels (India) Ltd. vs. Royal Orchid Hotels Ltd. & Anr, the Bombay High Court exhaustively listed the various conditions that must be met for a person to be able to claim protection under Section 34 after analysing the design of Section 34.7 These are listed below:
- The prior use of the mark must be in relation to the goods and services for which the mark has been later registered by the other person.
- The prior use of the mark must be continuous. The use cannot be isolated or intermittent. The mark must have been put to commercially continuous use in relation to the goods and services, and the mere adoption of the mark or issuance of an advertisement by the proprietor is not sufficient either.
- The proprietor claiming benefit/protection under Section 34 must have used the mark prior to the date of registration or use of the registered mark by the other person, whichever is earlier.
Therefore, it can be concluded that In order to maintain trademark protection in India, owners must actively promote and advertise their brands across all platforms. This consistent use of trademarks also aids in their protection, making it simpler to enforce them against infringement and counterfeiting.
Therefore, it can be inferred that while a registered proprietor's rights are excusive, they are not unalienable. His rights are not superior to those of a previous user and will always be constrained by those rights as well. The prior user also has the legal right—derived from common law and distinct from the rights granted by the Trade Marks Act of 1999 to stop others from misrepresenting his goods as their own. It is important to note that in a passing off lawsuit brought against a registered owner, it is not sufficient for the owner to demonstrate that he registered the trademark before the plaintiff used it. To successfully oppose an application of an interim injunction against him, he must also be able to present evidence of a prior use of the mark by him.
Meta Title: Sporadic use of Trademark cannot be constituting as continuous use.
Meta Description: The Delhi High in the case of TTK Prestige v/s KK & Company Delhi Pvt. Lmt. Has held that the sporadic usage of trademark cannot be held as the continuous usage of trademark. The section 28 confers the power of exclusive usage of trademark for its proprietor. The right granted by Section 28 is subject to the vested rights of the person who has used the same mark in connection with the same goods or services for which the mark is later registered by the other person, as is made clear by a simple reading of Section 34 of the Act. The said judgement upheld the principle laid down in TTK Prestige Ltd against KK & Company Delhi Pvt Ltd wherein the court held that Despite the Defendant's extensive use of the mark, the Court noted that it was only intermittent and sparingly used.
1. Livelaw, https://www.livelaw.in/news-updates/delhi-high-court-prestige-pressure-cooker-mark-222420 ( Last visited, March 27, 2023 ).
3. SCC Online Blog, https://www.scconline.com/blog/post/2022/12/05/the-rights-of-prior-users-of-trade-mark-under-the-trade-marks-act-1999/ ( Last visited, March 27, 2023 ).
4. Spicy Ip, SpicyIP Weekly Review (February 20 – February 26) – Spicyip ( Last visited, March 27, 2023 ).
5. The Mondaq, https://www.mondaq.com/india/trademark/1085352/protection-of-registered-trademarks-in-relation-to-goods--services-in-respect-of-which-the-trademark-is-not-registered ( Last visited, March 27, 2023 ).
6. Peps Industries v/s Kurlon limited, FAO(OS) (COMM) 94/2020 & CM No.18937/2020.
7. Kamat Hotels (India) Limited vs Royal Orchid Hotels Limited, SUIT NO.2224 OF 2008.
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