Trade mark application

As per your query it is understood that you need information about the trademark application.

Section 34 of the Trademark Act, 1999 provides protection to the prior use of the mark. It speaks in favour of the “First User” of the mark, before the proprietor of a registered trademark in respect of particular goods or services. The prior user of the mark is always on higher pedestrian and occupy a supreme power, though in order to get protection under section 34, which specifically talks about “First User” certain condition or requirements has to be satisfied:

·      The use of the mark is similar to or resembling the registered trademark.

·      The mark must be in continuous use and not intermittent.

·      The mark shall be compared fully and not in part. In Lupin vs. Sun Pharma, Lupin [plaintiff] using the name “TRIVOLIB” since 2011 and Sun Pharma [Defendant] using the name “VOBIT” since 2008 but in 2012, Defendant added prefix TRI and started using the name “TRI-VOBIT”. Delhi High Court noted that Plaintiff is the prior use of the mark “TRIVOLIB” and ruled in favour of Plaintiff [Lupin].

·      The mark must be used prior to the date of a registered trademark.

·      Merely adoption or advertisement of the mark does not constitute the user of the mark.

·      The first user must have gained a reputation in the market/ has done voluminous sales.

Prior use act as a defence in a trademark infringement dispute

Yes, the first user acts as a defence in trademark infringement and overrides the subsequent user even if the subsequent user has registered the trademark. Provided:

·      The first user has used the mark for a long and continuous period compared to the registered user.

·      Gained reputation in the market.

So based on the above given explanation you have to withdraw your application and discontinue use of the trademark.

Hope it helps!

Regards,

Anusha Singh

The issue requires professional consultation.