Skip to main content

PRIOR USER : INTELLECTUAL PROPERTY RIGHT

Hello friends today we shall discuss about the topic “prior user” in context of intellectual property rights.

As the name itself suggests the term prior user means the any person/entity etc. who is using a trademark from a long time without even registering it. Due to the recent developments in the area of intellectual property rights, the concept of prior user has gained much importance and in recent case laws, many times it was observed that even if a person is rightful owner of an intellectual property right say for eg a trademark with respect to the particular mark, even then he cannot restrain any person who has been using a similar mark from a long period of time.   

 

Sec 34 of the Trademark Act, 1999

This section aims at providing protection to the users/owners of a particular trademark who has not registered their mark with the Trademarks registry but are using the same before anyone else thereby granted protection under the head “prior user”. However, the term prior user must not be used in any restricted manner. This means that the person claiming use earlier in time must show that such usage is continuous one and not just a collection of some events here and there. In other words, the law will only come to rescue of prior user, if it is shown by relevant supportive materials placed on record that such person is a prior user of a particular mark in question, have used it as being the first user and in the said process gained reputation and goodwill in the market. This aspect of continuous usage was dealt with by Delhi High Court in case titled “Peps Industries Pvt Ltd Vs Kurlon Limited”; wherein there was a dispute regarding the usage of the term “ NO TURN” which has been registered in the name of the Plaintiff. However, Defendants claimed protection on the premise of being the “prior user”. The court held that no doubt that the plaintiff has enrolled for the trademark “NO TURN” and the defendants are obviously being the prior user, however, the usage by the defendant is not continuous, hence they cannot be protected under Section 34 of the Act. However once it is clearly shown that the mark in dispute is being used by the plaintiff as being the prior user, then even a PASSING OFF suit can also be filed against the registered owner of a mark having the same or similar mark. This was held by Supreme Court in “Whirlpool Case” where it was observed that a passing off action can be brought by a prior user even against the registered holder of the trademark. In another recent judgment titled “ NeonLaboratories Vs Medial Technology”  Supreme Court observed that the registered proprietor of a similar or identical mark do not have the right to prevent the use of the said mark by anyone who commenced usage of said mark earlier in time .

 

CONCLUSION

In India, the rights of an unregistered mark is also protected in case it is shown that he is the prior user of the particular mark and the other person is using the similar / same mark with respect to the allied services, thereby causing confusion in the minds of public. In determining whether the two marks are similar or not, it is advisable to compare the two marks as a whole and then to see whether it causes confusion in the minds of the people.

I hope we have clearly explained the topic and look forward for your valuable comments.

Labels:

Comments

  1. Kailash Madan17 July 2021 at 03:00

    Thanks wakeelsaab, Very well explained in simple words on the complex subject of "Intellectual rights." Thanks Kailash Madan, Mcom. LL.B., CAIIB, ACS

    ReplyDelete
  2. trademarkservices4 March 2022 at 17:52

    It is a proficient article that you have shared here.IP Attorney Sydney I got some different kind of information from your article which I will be sharing with my friends who need this info. Thankful to you for sharing an article like this.

    ReplyDelete

Post a Comment

Popular posts from this blog

Parental disputes or pending matrimonial and criminal matters between the natural guardians cannot constitute a valid statutory reason for refusal to issue passport says Allahabad High Court

Facts and Background The case involved a minor child aged about 2 years at the time of application whose mother applied for her passport on January 17, 2025. Despite completing all required formalities, the passport authorities kept the application pending indefinitely. The reason cited was the ongoing matrimonial dispute and criminal cases between the child's parents (the natural guardians). The authorities essentially treated these parental conflicts as a ground to withhold progress on the minor's passport application. The mother approached the Allahabad High Court via a writ petition, seeking directions for expeditious processing and issuance. Observations of the Court   Section 6 is Exhaustive and Mandatory   Section 6 of the Passports Act, 1967, provides the complete and exclusive list of grounds on which a passport authority may refuse to issue a passport or travel document.      - These grounds include matters like:       ...
Post a Comment
Read more

MARRIAGE REGISTRATION PROCESS IN DELHI

 Hello friends today we shall talk about the procedure for registration of marriage in Delhi.   ELIGIBILITY The marriage must have been solemnized either under the Hindu Marriage Act or under the Special Marriage Act, The Groom must have attained the minimum age of 21 years. The bride must be of the age of 18 years at least.   DOCUMENTS REQUIRED Photo ID proofs of both the parties like Aadhar card / PAN card / Voter card Date of birth proofs of both parties like 10 th certificate, etc. Permanent address proof must be there . Marriage photographs and Invitation Card. Passport Size Photographs of both parties. 2 witness in case marriage registered under Hindu Marriage Act or 3 witnesses in case it is registered under the Special Marriage Act along with their respective proofs like PAN CARD/ AADHAR CARD etc. An affidavit from both parties certifying the date of their marriage and more specifically stating that the marriage has not been performed between pers...
1 comment
Read more

DISTRICT COURT THRISSUR, KERALA HELD AIR ASIA LIABLE FOR DEFICIENCY IN SERVICE AND UNFAIR TRADE PRACTICES

Introduction    District Consumer Disputes Redressal Commission in Thrissur, Kerala (India), held AirAsia India Limited liable for deficiency in service and unfair trade practices. Facts and Background In this matter, a passenger's flight was cancelled by the airline for operational reasons. Under applicable rules (including those from India's Directorate General of Civil Aviation or DGCA, and the Consumer Protection Act), passengers are typically entitled to a full refund in such cases, and many airlines (including low-cost carriers like AirAsia) are expected to process automatic refunds promptly without requiring manual claims in straightforward cancellations. However, AirAsia failed to issue an automatic refund for the ticket amount (which was ₹2,983). The passenger made repeated attempts to obtain the refund but faced ongoing issues and harassment, ultimately having to approach the consumer forum to recover even this small sum. This caused financial loss, inconvenience, a...
Post a Comment
Read more