Trade Mark - Sec.34 and Sec.47 - First User rule & Abandonment of right for not using for a period of 5 years 3 months from the date of registration - Interim Injunction pending suit - Apex court held that since the Plaintiff-Respondents have alleged, and have prima facie supported with proof, that they had already been using their trademark well before the attempted user of an identical or closely similar trademark by the Defendant-Appellant, the former would be entitled to a temporary injunction, in light of the abovementioned ‘first in the market’ test. We find that the Plaintiff-Respondents have made out a prima facie case. The two other factors in an interim injunction, namely the balance of convenience and an irreparable loss, are both in favour of the Plaintiff- Respondents, given the potential loss of goodwill and business they could suffer should an injunction be denied. The Defendant-Appellant has been injuncted from using the mark ROFOL since 2005, after having launched products bearing the mark only in the previous year, so the balance of convenience is in favour of allowing the injunction to continue. - Appeal dismissed-2015 S.C.MSKLAWREPORTS
This “first user” rule is a seminal part of the Act.
Section 34 of the Trade Marks Act, 1999 (the Act) deserves
reproduction herein:
34. Saving for vested rights.—Nothing in this Act shall entitle the
proprietor or a registered user of registered trade mark to interfere with
or restrain the use by any person of a trade mark identical with or nearly
resembling it in relation to goods or services in relation to which that
person or a predecessor in title of his has continuously used that trade
mark from a date prior—
(a) to the use of the first-mentioned trade mark in relation to those goods
or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of a
predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use
being proved), to register the second mentioned trade mark by reason only
of the registration of the first mentioned trade mark.
This Section palpably holds that a proprietor of a trade mark does not have
the right to prevent the use by another party of an identical or similar
mark where that user commenced prior to the user or date of registration of
the proprietor.
This “first user” rule is a seminal part of the Act.
While the case of the Plaintiff-Respondents is furthered by the fact that
their user commenced prior to that of the Defendant-Appellant, the entirety
of the Section needs to be taken into consideration, in that it gives
rights to a subsequent user when its user is prior to the user of the
proprietor and prior to the date of registration of the proprietor,
whichever is earlier.
In the facts of the case at hand, the Defendant-
Appellant filed for registration in 1992, six years prior to the
commencement of user by the Plaintiff-Respondents.
The Defendant-Appellant
was, thus, not prevented from restraining the Plaintiff-Respondents’ use of
the similar mark PROFOL, but the intention of the Section, which is to
protect the prior user from the proprietor who is not exercising the user
of its mark prima facie appears to be in favour of the Plaintiff-
Respondents.
Section 47 of the Act is in the same vein and statutory strain
inasmuch as it postulates the possibility of a registered mark being taken
off the register on an application being made by any aggrieved person,
inter alia, on the ground that for a continuous period of five years and
three months from the date on which the trademark was registered, there was
no bona fide use thereof.
In the case in hand, prima facie, it appears
that for over five years after a registration application was made by the
Defendant-Appellant, the mark was not used. Facially, the Act does not
permit the hoarding of or appropriation without utilization of a trademark;
nay the Defendant-Appellant has allowed or acquiesced in the user of the
Plaintiff-Respondents for several years.
The legislative intent behind
this Section was to ordain that an applicant of a trademark does not have a
permanent right by virtue of its application alone. Such a right is lost if
it is not exercised within a reasonable time.
since the
Plaintiff-Respondents have alleged, and have prima facie supported with
proof, that they had already been using their trademark well before the
attempted user of an identical or closely similar trademark by the
Defendant-Appellant, the former would be entitled to a temporary
injunction, in light of the abovementioned ‘first in the market’ test.
We
find that the Plaintiff-Respondents have made out a prima facie case.
The
two other factors in an interim injunction, namely the balance of
convenience and an irreparable loss, are both in favour of the Plaintiff-
Respondents, given the potential loss of goodwill and business they could
suffer should an injunction be denied.
The Defendant-Appellant has been
injuncted from using the mark ROFOL since 2005, after having launched
products bearing the mark only in the previous year, so the balance of
convenience is in favour of allowing the injunction to continue.
In
Milmet, this Court had taken note of the fact that the unsuccessful
litigating party had in the duration of the litigation started using
another mark, and found that this would prima facie assume significance in
assessing “irreparable loss”.
For manifold and myriad reasons, we are of the opinion that the
decision of the Trial Court, as affirmed by the First Appellate Court, is
reasonable and judicious, and does not suffer from perversity by any
dialectic that the Defendant-Appellant may proffer. The Appeal is
accordingly dismissed, but with no order as to costs. -2015 S.C.MSKLAWREPORTS
This “first user” rule is a seminal part of the Act.
Section 34 of the Trade Marks Act, 1999 (the Act) deserves
reproduction herein:
34. Saving for vested rights.—Nothing in this Act shall entitle the
proprietor or a registered user of registered trade mark to interfere with
or restrain the use by any person of a trade mark identical with or nearly
resembling it in relation to goods or services in relation to which that
person or a predecessor in title of his has continuously used that trade
mark from a date prior—
(a) to the use of the first-mentioned trade mark in relation to those goods
or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of a
predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use
being proved), to register the second mentioned trade mark by reason only
of the registration of the first mentioned trade mark.
the right to prevent the use by another party of an identical or similar
mark where that user commenced prior to the user or date of registration of
the proprietor.
This “first user” rule is a seminal part of the Act.
While the case of the Plaintiff-Respondents is furthered by the fact that
their user commenced prior to that of the Defendant-Appellant, the entirety
of the Section needs to be taken into consideration, in that it gives
rights to a subsequent user when its user is prior to the user of the
proprietor and prior to the date of registration of the proprietor,
whichever is earlier.
In the facts of the case at hand, the Defendant-
Appellant filed for registration in 1992, six years prior to the
commencement of user by the Plaintiff-Respondents.
The Defendant-Appellant
was, thus, not prevented from restraining the Plaintiff-Respondents’ use of
the similar mark PROFOL, but the intention of the Section, which is to
protect the prior user from the proprietor who is not exercising the user
of its mark prima facie appears to be in favour of the Plaintiff-
Respondents.
Section 47 of the Act is in the same vein and statutory strain
inasmuch as it postulates the possibility of a registered mark being taken
off the register on an application being made by any aggrieved person,
inter alia, on the ground that for a continuous period of five years and
three months from the date on which the trademark was registered, there was
no bona fide use thereof.
In the case in hand, prima facie, it appears
that for over five years after a registration application was made by the
Defendant-Appellant, the mark was not used. Facially, the Act does not
permit the hoarding of or appropriation without utilization of a trademark;
nay the Defendant-Appellant has allowed or acquiesced in the user of the
Plaintiff-Respondents for several years.
The legislative intent behind
this Section was to ordain that an applicant of a trademark does not have a
permanent right by virtue of its application alone. Such a right is lost if
it is not exercised within a reasonable time.
since the
Plaintiff-Respondents have alleged, and have prima facie supported with
proof, that they had already been using their trademark well before the
attempted user of an identical or closely similar trademark by the
Defendant-Appellant, the former would be entitled to a temporary
injunction, in light of the abovementioned ‘first in the market’ test.
We
find that the Plaintiff-Respondents have made out a prima facie case.
The
two other factors in an interim injunction, namely the balance of
convenience and an irreparable loss, are both in favour of the Plaintiff-
Respondents, given the potential loss of goodwill and business they could
suffer should an injunction be denied.
The Defendant-Appellant has been
injuncted from using the mark ROFOL since 2005, after having launched
products bearing the mark only in the previous year, so the balance of
convenience is in favour of allowing the injunction to continue.
In
Milmet, this Court had taken note of the fact that the unsuccessful
litigating party had in the duration of the litigation started using
another mark, and found that this would prima facie assume significance in
assessing “irreparable loss”.
decision of the Trial Court, as affirmed by the First Appellate Court, is
reasonable and judicious, and does not suffer from perversity by any
dialectic that the Defendant-Appellant may proffer. The Appeal is
accordingly dismissed, but with no order as to costs. -2015 S.C.MSKLAWREPORTS
