Trademarks are significant assets for any business. Irrespective of how big or small a business is, a trademark is an indispensable part of it. This is why a trademark has to be unique and distinctive. It has to help the consumers identify the source of the goods or services they are using. This is why people choose to register their trademarks. Owning a trademark excludes anyone else from using the trademark you own.
However, what if someone has been using your trademark even before you got the trademark registered? Will you still be able to exclude the prior user from using the trademark that you now own? This is where the right of prior use comes into play.
What is the Right of Prior Use?
According to the principle of prior use, priority in adoption, and use prevails over priority in registration. This, in effect, means that the rights of a prior user are more significant than the rights of the proprietor of the registered trademark.
The right of prior use is envisaged in Section 34 of the Trademarks Act. Section 34 states “Nothing in this Act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark 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 trademark from a date prior.”
Simply put, section 34 states that a registered user cannot stop a third person from using his registered trademark if the third person has been using the trademark continuously from a prior date.
Intermittent Prior Use and Section 34
Intermittent prior use, as the name suggests, means that though the trademark was previously used, it was not used continuously. Intermittent use means occasional use of the trademark.
Now the question arises, does intermittent prior use also warrant the application of Section 34, with respect to establishing prior use of a mark.
In order to answer this, we have to pay attention to the way Section 34 is worded. Section 34 clearly states that not only should the person be a prior user, but he should have also been using the mark continuously. A plain reading of the section reveals that in order to invoke Section 34 and to establish the right of prior use, the prior use of the mark has to be continuous, and it cannot be intermittent. Therefore, intermittent prior use does not warrant the application of Section 34.
Peps Industries Pvt. Ltd. V. Kurlon Ltd.
This case helps us understand the importance of prior continuous use in establishing the defense of prior use under section 34.
In the case of Peps Industries Pvt. Ltd. V. Kurlon Ltd. CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019, the Plaintiff (Peps Industries) sought a permanent injunction against the defendant (Kurlon) from using the mark ‘NO TURN,’ registered by the Plaintiff. The defendant took the defense that it was the prior user of the mark ‘NO TURN’. In this case, amongst other issues, the court had to decide if the defendant was, in fact, the prior user of the mark ‘NO TURN’.
The Plaintiff had adopted and was in continuous use of the same since 15th January 2008. The defendant contended that they have been using the trademark since the year 2007.
While rendering its decision, the court held that though the rights of a registered trademark owner are exclusive, it is in no way absolute as it is subject to various provisions.
The court also held that though the defendant has been using the mark from the year 2007, it does not constitute prior use within the meaning of section 34 because the use was intermittent in all those years. Also, the sales were not voluminous. Given that there was no indication of continuous use of the mark ‘NO TURN’ by the defendant, the defendant cannot rely on Section 34. Simply put, the court stated that, though the defendant is the prior user of the mark, since the year 2007, the use of the mark is intermittent and not voluminous. As such, the defendant is not eligible to claim the defense under Section 34.
On a side note, the case took an interesting turn as the Plaintiff was denied an injunction. This was because the court observed that the mark ‘NO TURN’ is a descriptive mark as it describes the quality of the mattress. As such, the mark cannot be appropriated by the Plaintiff alone.
Why is Intermittent Prior use not a defense under Section 34?
The point of Section 34 is to protect the rights of prior users of a trademark. As already mentioned, the purpose of a trademark is to serve as an indicator to the consumers about the source of the goods or services. If a person has been using a mark for a while but has not registered it and the consumers associate the mark with that person’s business, would it be fair for another person to register the trademark and stop the prior user from using the mark solely based on being the owner of the mark?
No. This is why Section 34 is essential. It protects the right of the prior user over the right of the owner of the registered trademark.
Then why doesn’t intermittent prior use invoke the same protection? This is for the simple reason that intermittent prior use is less likely to have made an impression on the minds of the consumer. Only when something is used continuously will the consumers be able to recall it. With intermittent use, the chances are that the consumer will not remember the mark. This is why Section 34 clearly mentions that the prior use has to be continuous. Two requirements for prior use under Section 34 are continuous prior use and voluminous sales. Without this, you cannot invoke the defense under Section 34.
