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Defense of Prior Use of the Mark is not Established if the Use is Intermittent and not Voluminous

Our Associate, Madhurima Gadre discusses “Defense of Prior Use of the Mark is not Established if the Use is Intermittent and not Voluminous”

The Delhi High Court, in a dispute between two Indian mattress companies, namely, Peps Industries Pvt. Ltd. and Kurlon Limited, has clarified the manner of use of the mark necessary to establish the defence of prior use under the Trade Marks Act, 1999 (“Act”).

The plaintiff, Peps Industries Pvt. Ltd., sought a decree of permanent injunction against use of the plaintiff’s registered mark NO TURN by the defendant, Kurlon Limited. As per the plaintiff, it owns a 2008 trade mark registration for the mark NO TURN covering, inter alia, mattresses in Class 20. Further, the plaintiff has been using the mark NO TURN continuously and extensively for eleven (11) years.

In August 2018, the plaintiff became aware that the defendant had adopted the mark NO TURN for similar goods. During correspondence between the parties, the defendant stated that it is the prior user of the mark NO TURN in India. Subsequently, the defendant filed an application to register the mark NO TURN claiming use since October 8, 2007 as well as a cancellation action against the plaintiff’s registration.

The defendant, relying on the decisions of S. Syed Mohideen v. P. SulochanaBai, (2016) 2 SCC 683, and Intercity Hotel GMBH v. Hotel Intercity Delhi & Ors., 2019 SCC OnLine Del 7644, contended that its use of the NO TURN mark precedes the filing date of the plaintiff’s application, which was filed on a proposed to be used basis. Further, the defendant claimed that it uses the mark NO TURN alongside its reputed brand KURLON. Consequently, there can be no consumer confusion. The defendant submitted invoices showing use of the NO TURN mark, but the dates on these invoices were intermittent.

The court observed that the defendant is the prior user of the mark NO TURN. However, since such use was intermittent and not voluminous, it is not sufficient to establish the defence of prior use under Section 34 of the Act. The court reiterated that rights of registered owner of the trade mark, though exclusive, are not absolute. Such right is not higher in comparison to the right of a party using an identical trade mark or a resembling trade mark in relation to same/ similar goods and services, provided that such a party has been continuously using the said trade mark prior to use of the trade mark by the registered owner. The use has to be continuous, and not isolated or disjointed. There must be commercially continuous use of the trade mark in relation to the same/ similar goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Act also has to prove the volume of sales.

Based on the above, the court held that the defendant’s prior use would not help it. However, as per the court, the plaintiff was not entitled to the relief of injunction as the mark NO TURN is descriptive because it describes the quality of mattresses which do not need to be turned around. The plaintiff did not place any material on record to show that, on the date of application or even on the date of registration, the plaintiff’s mark NO TURN had acquired the distinctiveness to achieve the status of a well-known mark.

Peps Industries Pvt. Ltd. v. Kurlon Limited, Delhi High Court decision dt. March 16, 2020 in CS(COMM) 174/2019

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