Introduction

The High Court of Delhi recently delivered a significant ruling on trademark priority, statutory rights under registration proceedings, and the doctrine of prior adoption versus subsequent commercial user. The Division Bench addressed whether an earlier trademark application filed on a proposed to be used basis can be defeated by a subsequent applicant who actually launched products in the market while the prior application remained pending before the Trade Marks Registry. The ruling brings notable clarity to commercial entities and intellectual property practitioners regarding the sanctity of filing dates in trademark prosecution.

Factual and Procedural Background

The dispute traces back to late 2007, when two separate entities sought registration for the trademark 20-20 in Class 30, covering food products, biscuits, and confectionery.

• Respondent No. 2 filed Trademark Application No. 1606126 on 27.09.2007 on a proposed-to-be-used basis.
• Just a few days later, Parle Products Pvt Ltd filed Trademark Application No. 1608183 on 04.10.2007 for the same mark 20-20, also on a proposed to be used basis.

During examination of Parle’s application, the Registry cited the earlier application of Respondent No. 2 as a conflicting mark under Section 11 of the Trade Marks Act, 1999. In response, Parle contended that its mark was visually, phonetically, and conceptually distinct and offered to restrict its specification of goods to biscuits. Parle subsequently commenced commercial sales of its biscuits under the mark 20-20 around 2007-2008 and obtained registration in November 2017.

Meanwhile, the application of Respondent No. 2 faced prolonged administrative delays, refusal, and subsequent appeals. After intervention by the Intellectual Property Appellate Board in August 2019, the application of Respondent No. 2 was finally advertised in the Trade Marks Journal on 10.08.2020.

Parle filed a notice of opposition on 25.11.2020 claiming extensive user, goodwill, and market reputation. The Registrar of Trade Marks dismissed Parle’s opposition on 29.04.2025 and issued a registration certificate to Respondent No. 2. Parle challenged this before a single judge of the High Court of Delhi, who dismissed the appeal on 10.03.2026. Aggrieved by the decision, Parle preferred a Letters Patent Appeal before the Division Bench.

Timeline of Key Events

Dispute Before the Court

The core legal question before the Court was whether a prior applicant who applied for a mark on a proposed-to-be-used basis can be denied registration merely because a subsequent applicant introduced goods under the identical mark into the market earlier and generated substantial commercial goodwill.

Parle contended that trademark rights stem from actual commercial use in the market rather than mere registration filings. Relying on the first in the market test and common law principles governing passing off, Parle asserted that its continuous market presence since 2007 gave it superior rights under Section 34 of the Trade Marks Act, 1999, which should override a dormant trademark application.

On the other hand, Respondent No. 2 contended that as the senior adopter and prior applicant, its priority date of 27.09.2007 could not be wiped out by Parle’s subsequent market launch. It argued that non-use of its mark during the 17-year interregnum was purely due to administrative and procedural delays in the Trade Marks Registry and pending opposition proceedings, which should not prejudice its statutory rights.

Reasoning and Analysis of the Court

The High Court conducted an extensive analysis of statutory provisions under the Trade Marks Act, 1999, specifically examining Section 18, Section 11, Section 28, and Section 34. The Court observed that when two entities apply for identical or deceptively similar marks on a proposed to be used basis, Section 18 establishes that rights upon registration relate back to the date of application.

The Bench carefully analyzed previous judicial precedents, including the judgment of the High Court of Madras in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. (1977 IPLR 83) and decisions of the High Court of Delhi in Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. (2019:DHC:1423) and Drums Food International Pvt. Ltd. v. Euro Ice Cream (2011 SCC OnLine 817). These rulings consistently establish that for registration entitlement under Section 18, priority is determined as on the date of application. Subsequent commercial use by a junior applicant during the pendency of a senior application does not grant any special statutory privilege or override the prior applicant’s claim.

The Court distinguished the judgment of the Supreme Court of India in Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016 (2) SCC 672). The Bench observed that Neon Laboratories was rendered in the context of an interim injunction in an action for passing off, where established market goodwill carries pre-eminence. In contrast, the present dispute pertained strictly to statutory registration and opposition proceedings under Section 18, where the relevant date of assessment is the date of filing.

Additionally, the Court held that Respondent No. 2 could not be accused of abandoning its mark or hoarding it without intent, as it had diligently litigated and pursued its registration across various forums for 17 years. Delay caused by procedural bottlenecks of the Registry cannot operate to the detriment of a diligent applicant.

Finally, the Court pointed out that Parle had engaged in approbation and reprobation. In 2008, when replying to the Registry’s examination report, Parle had taken a firm stand that the rival marks were visually, phonetically, and conceptually distinct in order to secure its own registration. Having obtained registration on that representation, Parle could not be permitted to take a contradictory stance in opposition proceedings by claiming that the mark of Respondent No. 2 was deceptively similar.

Key Findings of the Court

• Priority under Section 18 is determined by the filing date of the trademark application.
• Registration rights relate back to the original application date.
• Subsequent commercial use cannot override an earlier trademark application.
• Administrative delay in the Trade Marks Registry does not prejudice a diligent applicant.
• A litigant cannot approbate and reprobate by taking inconsistent positions before the Trade Marks Registry.
• The principles governing passing off and statutory registration operate in different legal spheres.

Final Decision of the Court

The Division Bench found no merit in the appeal and affirmed the judgment of the Single Judge. The Court held that Respondent No. 2 was the senior applicant whose priority related back to 27.09.2007, making Parle’s subsequent use in 2007-2008 inconsequential for determining registration rights. Consequently, the Letters Patent Appeal and all connected pending applications were dismissed.

Point of Law Settled

The Court reaffirmed the crucial principle of trademark law that in statutory registration proceedings under Section 18 of the Trade Marks Act, 1999, priority between competing applicants filing on a proposed-to-be-used basis is determined strictly by the date of application. Subsequent commercial entry into the market by a junior applicant while a senior application is pending before the Registry does not divest the senior applicant of their statutory rights. Furthermore, the ruling enforces the principle that a party cannot approbate and reprobate by making inconsistent representations regarding mark similarity before the Trade Marks Registry to suit different stages of litigation.

Case Summary

• Parle Products v. J.P. & Co. (1972): Supreme Court Test for Deceptive Similarity in Trademark Infringement
• Priority Of Consideration Vs Priority Of Contract
• A Subsequent Supreme Court Decision — Not a Ground for Review
• Trademark Protection and Its Registration Process in India
• Patent Priority Date Amendment Cannot Revive Time-Barred Patent Application