IP Case Law › Trade Marks › Parle Products Pvt. Ltd. v. The Registrar of Trade Marks & A…
Relevant Acts and provisions
Trade Marks Act, 1999
Section 18Section 18(1)Section 34
Provisions considered: Section 18(1) of the Trade Marks Act, 1999; Section 34 considered.
Brief facts
Parle Products opposed another company's application to register the trade mark '20-20'. That company had applied on 27 September 2007 on a proposed-to-be-used basis. Parle applied for the same mark eight days later, on 4 October 2007. Parle argued it should get the rights because it was actually using the name, selling biscuits under '20-20' since around 2007-2008, and had registrations for '20-20', 'TWENTY-20' and 'T20'. The other company's application was initially rejected; it had to file an RTI request to learn what had happened, and in 2019 an appellate tribunal overturned the rejection, the application finally being advertised in the August 2020 Trade Marks Journal. Parle's opposition was rejected by the Registrar, and a Single Judge also ruled against Parle on the reasoning that the other company, having filed first, was the prior adopter or senior applicant. Parle appealed to a Division Bench relying on Neon Laboratories Ltd. v. Medical Technologies Ltd.
Issues before the Court
- Whether the party that filed the trade mark application first automatically gets the stronger legal claim, even though it had not actually used the mark.
- Whether actual prior commercial use counts for more than a prior filing when deciding who gets to register a trade mark.
- Whether Parle, having earlier told the Registry that the two marks were different in order to secure its own registration, can now argue that they are confusingly similar.
Court's findings
The Court held that Neon Laboratories was authority only in the context of a passing off action, where both competing parties were actually using their marks in the market. Since Respondent No. 2 had not commenced use of '20-20' at all, no question of passing off or marketplace confusion arose, and the 'first in the market' test had no application. The Court applied the principle in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd., holding that under Section 18 the rights of competing applicants are determined as on the date of application, and that use by a junior applicant between the two filing dates confers no special priority. The Court also rejected Parle's case on an independent ground: in 2008, when Parle's own application faced an objection based on Respondent No. 2's earlier-filed mark, Parle had told the Registrar the two marks were visually, phonetically and conceptually distinct, and used this to secure its own registration. It could not now argue the opposite. The Court further noted that the delay in the other company's registration was attributable to Trade Marks Registry procedure and could not be held against a diligent applicant.
Decision
The Division Bench dismissed Parle's appeal and upheld the Single Judge's decision.
Key legal principle / ratio
Where two parties file competing applications for registration of an identical or deceptively similar trade mark on a proposed-to-be-used basis, priority for registration under Section 18 of the Trade Marks Act, 1999 is determined by the date of application, not by which party first commences actual commercial use; subsequent use by the junior applicant in the interregnum does not defeat the senior applicant's priority. The 'first in the market' principle in Neon Laboratories Ltd. v. Medical Technologies Ltd. is confined to passing off or injunction disputes involving actual competing use, and is not authority for displacing Section 18 priority or for a defence under Section 34 in a pure registration or rectification dispute where the earlier applicant has not commenced use. Further, a party that has represented to the Registry that its mark is distinct from a cited mark, in order to secure its own registration, cannot later assert that the same mark is deceptively similar; such approbation and reprobation is impermissible and independently defeats the claim.
Cases cited
- Neon Laboratories Ltd. v. Medical Technologies Ltd.
- Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd.
Authorities referred to in the decision. Please verify each citation in the judgment itself.
Keywords
Approbation and Reprobation Prior Registration Priority Proposed to be Used Section 18 Trade Mark Squatting
Read the judgment
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