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.