The Collocation Between Prior User and Registered User under Trademark Law 1999

Introduction

 

The Trademarks Act 1999 is crucial in protecting trademarks in India. The act of establishing a trademark leads to specific proprietary rights that are exclusive to the owner. A trademark is described as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, product form, packaging, or combinations of colors or any combination thereof under section 2(m) of the Act. The Trademarks Act, 1999 and the Trademarks Rules, 2017 govern trademarks in India. The idea of "Prior user" and "Registered user" is a basic problem with distinct ramifications.

 

Prior user & registered user: Trademark act, 1999

A trademark provides many advantages to its owner in addition to providing its creator with an exclusive right. A prior user means a person who is using similar trademark even before the registered proprietor of trademark and the law recognizes the prior user’s rights before the registered proprietor. However, the owner of a "Registered user" account is granted some exclusive rights. One of these rights is the capacity to stop third parties from using the registered mark for the same or comparable products or services by using a mark that is exact or confusingly similar.

The Conflict between the Prior user & registered user

The conflict between registered trademark rights and past use often leads to disputes. The acquisition of trademark rights in India can be achieved through prioritizing the adoption of the brand and using it for an extended period of time in an honest, genuine, and continuous manner.The doctrine “first to use” applies rather than “first to register”. A prior user of a trademark is considered supreme than the registered proprietor of the trademark in India.The decision in  N.R. Dongre v. Whirlpool Corporation, concluded  that the worldwide prior user was given preference and predominance over the registered trademark in India.

USE OF THE TRADEMARK DEMONSTRATED BY ILLUSTRATIVE EXAMPLES

• Product Labeling: Adding a trademark on a product's label is a clear way to use it for commercial dealings. Furthermore, you can also consider packaging that is then put up for sale in the market.
• Advertising: Advertising is the deliberate placement of commercials to highlight a brand across a range of media platforms.
• Trade exhibitions: Companies utilize trade exhibitions to present their goods, draw in customers, and create alliances.
• Website Usage: Utilizing the registered trademark to promote and advertise goods and services that are available for purchase on a company website.

 

 

Hatsun Agro Product Ltd v Sri Ganapathy Dairy

 

The plaintiiff was a manufacturer and marketer of various food and dairy products, including ice cream, dairy whitener, ghee, and butter. They had been using the mark “ARUN” since 1970  and also claimed the use of their ARUN stylised mark only from January 2006 for ghee. The defendant asserted that their use of the mark was honest and that they were the prior user of the mark “ARUN” for ghee since 1989.

However, the court held that defendant was a prior use of the trademark. Hence the plaintiff claim was rejected and also upheld the principle of  prior user rights take precedence over subsequent user rights, even if the subsequent user has registered the trademark.

Conclusion

The Indian Trademarks Act, 1999 recognises both the value of prior use and registered trademarks. It can be concluded that even the unregistered trademarks in India can be protected and there is no mandatory requirement for the registration of the trademark in India for enforcing such common law rights against a violator. The prior adoption and use of the trade are of utmost importance and will supersede over the trademark registration.