In cases for the infringement of Trade Mark and in cases of passing off, user of
trademark plays very important role in establishing proprietary right over the
Section 31 of the he Trade Marks Act 1999 provides that Trade Marks Registration
is prima facie evidence of its validity. Mere production of Registration
Certificate was sufficient in cases pertaining to infringement of Trade Mark.
The relevant provision of Trade Marks Act 1999 is being reproduced as here in
31 Registration To Be Prima Facie Evidence Of Validity:
- In all legal proceedings relating to a trade mark registered under this
Act (including applications under section 57), the original registration of
the trade mark and of all subsequent assignments and transmissions of the
trade mark shall be prima facie evidence of the validity thereof.
The Hon'ble Supreme Court of India has also retuned strong presumption in favour
of Trade Marks Registration. In 1986 AIR 137 titled as American Home Products Vs
Mac Laboratories Private Limited, the Hon'ble Supreme Court of India has
returned the finding that in cases of Infringement of Trademark, only Trade
Marks Registration is sufficient to obtain the relief of injunction. The
relevant para of said Judgment is reproduced as under:
When a person gets his trade mark registered, he acquires valuable rights by
reason of such registration. Registration of his trade mark gives him the
exclusive right to the use of the trade mark in connection with the goods in
respect of which it is registered ant if there any invasion of this right by any
other person using a mark which is the same or deceptively similar to his trade
mark, he can protect his trade mark by action for infringement in which he can
obtain injunction, damages or an account of profits made by other person. In
such an action the registration of a trade mark is prima facie evidence on its
There by the Hon'ble Supreme Court of India observed that in cases of
infringement of Trade Mark, mere Trade Mark Registration is sufficient and the
registered proprietor can obtain injunction. Much weight age was given to the
registration certificate. Mere production of registration certificate was
sufficient and the registered proprietor was not required to produce any other
document, except producing the Trade Mark registration Certificate. Once the
offending trade mark is found to be similar to the registered trade mark, then
the registered proprietor was not require to produce any other document.
Gradually the law is changing its colour and various courts passed Judgments
giving much more emphasis on the user of a trademark. In 2011 (45) PTC 553 (Del),
Sancheti Appliances Pvt. Ltd. Vs M/S J.K. Electrical Industries
Judgment, the Hon'ble High Court of Delhi has retuned such finding as under
However, the Trademarks Act, 1999, has woven an exception to this rule, which
is that if there is a prior user, of the same or similar mark, his action or defence
can defeat the registered trademark proprietor's rights.
The Hon'ble Supreme Court of India , in a recent Judgment 2015 (64) PTC 225
(SC), Neon Laboratories Versus Medical Technologies Ltd, has given much more
emphasis on the prior user of trade mark, vis-a-vis the registered proprietor of
a trade mark. In (2004) 12 SCC 624, Milmet Oftho Industries v. Allergan
Hon'ble Supreme Court of India has returned the finding that the true test is
that who is first in the World Market. The right of prior user was also held to
be superior in case of (1996) 5 SCC 714, N.R. Dongre v. Whirlpool Corporation.
In (2015) 7 Scale 136 Innovolt Inc. Vs. Kevin Power Solutions Ltd, the
Hon'ble Supreme Court of India observed that the right of prior user prevails
upon the subsequent registered proprietor of a trade mark.
User of Trade Mark is playing very important role. There are plethora of
Judgments where various Courts has returned the finding the even registered
Trade Marks dies of non user. If a party obtains registration but does not user
the Trade Mark, then non user of registered Trade Mark dilutes the right
In such circumstances, various parties tries to create sham user by various
ways. There has been tendency by parties to create the user of Trade Mark by any
means. Normally for proving the user of a Trade Mark, bills, Invoices,
Advertisement in News Papers, Magazines, TV Advertisement etc. are considered to
be credible evidence of user. Use in calendar is also easy mode to create sham
defence of user. Here is one Order of Hon'ble High Court of Delhi, where finding
is that user in Calendar does not prove the actual user of Trade Mark.
Hon'ble Justice Shri Vipin Sanghi, High Court of Delhi , vide order dated
24.07.2013, passed in Suit bearing CS(OS) 2426/2009 , titled as M/s Kiwi
Foods (India) Pvt. Ltd Vs M/s Dugar Spices and Eatables Pvt. Ltd
. , returned
the finding that user of Trade Mark in a Calendar does not prove user of a
trademark. Here are the brief introduction of facts of the said case and then
the relevant laws laid down by the Hon'ble High Court of Delhi in the said
order, regarding user of Trade Mark on Calendar.
In this case, plaintiff claimed that the same is engaged in the business of
manufacturing and marketing of confectionary, snacks and namkeens and other
related goods. The plaintiff asserted that it adopted the mark FUN POP since
April 2005 and has also been using FUN STAR and FUN RINGS. In case the
plaintiff applied for registration of FUN POP on 08.04.2005 and for FUN STAR
on 12.11.2007. FUN RINGS is applied for on 6.10.2008. The case was pertaining
to passing off action as the plaintiff's Trade Marks Applications were not
registered at that point of time. However the plaintiff has put on record
documents showing user of the subject matter Trade Mark since the year 2008.
The defendants alleged that the same is using the Trade Mark FUN RINGS since the
year 2006. In support of alleged user since the year 2006, the defendant has
placed on record the calendar stated to have been circulated by it in the year
2006 and 2007. In these calendars apart from other products, the product FUN
RINGS has also been displayed.
However the defendant filed the bills/Invoices only since the year 2009. The
Hon'ble High Court of Delhi returned the finding that Mere use of the picture of
FUN RINGS on the calendar of the year 2006 does not establish the actual user of
the said mark on the product by the defendant. Therefore, the plaintiff is
entitled to protection in respect of FUN RINGS.
Accordingly in the afore mentioned case, the Hon'ble High Court of Delhi was
pleased to grant injunction in favor of the Plaintiff and against the
Defendant. The said order has not been challenged by the Defendant in this
case, hence the said order has become a biding precedent.
It is submitted that the Hon'ble High Court of Delhi disapproved the user of
Trade Mark by the Defendant in the Calendar as the same is self serving
document. If user of the Trade Mark in Calendar be approved by the Court , then
any party can create the sham user. Reason is that Calendar is a self serving
document and can be created/printed by the party. This is the reason, why the
Hon'ble High Court of Delhi returned the finding that user of Trade Mark on
Calendar does not establish the actual user of the Trade Mark.
Similarly Brochure, Price List, Pamphlets , Catalogue etc. also fall in same
category of document, Calendar falls. All these documents are self serving
documents and party can create itself and can put any year on these documents.
All these documents do not relate to actual commercial user of the trademark.
Unlike the bills/Advertisement in New Paper, Documents pertaining to Government
Organization etc. do relate to actual user of trade mark.
It is submitted that in this document this factor must have been in the mind of
Hon'ble Court that those documents, which actually relates to commercial user of
a trade mark, should be considered as user of a trademark. While the documents,
which actually do not correspond to actual commercial user of trade mark, should
not be considered as user of trademark.
Written By: Ajay Amitabh Suman, Advocate