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Defendant's Burden of Proof under Section 34 of the Trademarks Act 1999

The case at hand involves a dispute between the Plaintiff and the Defendant over the alleged infringement of the Plaintiff's registered trademark "HTA" for oil seals and automobile rubber parts.

The Plaintiff claims to have extensively and openly used the mark since 1977, while the Defendant, lacking a trademark registration, is accused of using similar marks "HTA" and "ARS-HTA" for oil seals.

The Plaintiff seeks an injunction against the Defendant's alleged infringing use. This article will delve into the requirements for the Defendant to successfully avail the protection provided by Section 34 of the Trademarks Act 1999 in light of the presented facts and relevant legal principles.

Section 34 of the Trademarks Act 1999:
Section 34 of the Trademarks Act 1999 provides a limited defense to an unregistered user of a mark that is registered in favor of another party. It allows the infringer to escape an injunction if their use of the impugned mark predates the use or the registration, whichever is earlier, of the mark owned by the plaintiff This provision seeks to balance the rights of a registered trademark owner with those of an unregistered user who has established prior use.

Analysis of Defendant's Case:
To take advantage of the protection offered under Section 34, the Defendant must establish the following elements:
Prior Use: The Defendant needs to demonstrate that they have been using the impugned mark (in this case, "HTA" and "ARS-HTA") before the Plaintiff's date of registered mark "HTA or user , whichever is earlier. In this case, the Defendant claims to have used the mark since 1985.

Precedence over Plaintiff's Use: The Defendant must establish that their use of the impugned mark began before the Plaintiff's use of their registered mark in 1977. This chronology is crucial for the Defendant's case under Section 34.

Good Faith: The Defendant's prior use should be established in good faith, without attempting to capitalize on the Plaintiff's established reputation or goodwill associated with their mark.

In the present case, while the Plaintiff's registered trademark dates back to 2007, while its use of the mark "HTA" since 1977 becomes relevant. The Defendant asserts use since 1985, which would place their use subsequent to the Plaintiff's use. This timeline potentially jeopardizes the Defendant's ability to invoke Section 34 as a defense. Result was that the Defendant failed in taking advantage of Section 34 of Trademark Act 1999.

Section 34 of the Trademarks Act 1999 provides an exception to the general principle of protecting registered trademarks by allowing an unregistered user to continue using a mark under certain circumstances. To successfully avail this defense, the Defendant must prove their prior and non-infringing use of the impugned mark, with the use predating the Plaintiff's use or registration, whichever is earlier.

The Case Law Discussed:
Case Title: Paul Components Pvt. Ltd. Vs Hi Te h Arai Pvt. Ltd.
Date of Judgement/Order:09/08/2023
Case No. First Appeal from Order No.77 of 2023
Neutral Citation: CS Comm 374
Name of Hon'ble Court: Dhi High Court
Name of Hon'ble Judge: C Hari Shankar, HJ

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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