What happens if you apply for a trademark application and get the 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 trademark.
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 following:
(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 registered;
(2) the use must be a continuous use of the trademark in India;
(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 earlier.
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 of fact.
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.
You may visit our comprehensive trademark search services to get registrability opinion of your mark based on trademark searches and prior user of trademarks, if any.