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A Descriptive Trademark Can Not Protected Without Acquired Distinctiveness

The Plaintiff has filed the subject matter Suit on the basis of proprietary rights in the trademark NOTURN in relation to mattress.

The Plaintiff alleged to be registered proprietor of the mark NOTURN since the year 2008.Though the trademark was filed as proposed to be used.

The subject matter Suit was filed against the Defendant as the Defendant was alleged to be using identical Trade mark NOTURN in relation to identical products.

The asserted that the same is the prior user of the Trademark NOTURN since the year 2007. The Defendant also took the Defense that it's user is also protected under the provision of Section 34 of the Trademarks Act 1999.

Let us see, what Section 34 of the Trademarks Act 1999 provides for. For ease in reference afore mentioned provision of Trademarks Act 1999 is reproduced as under:

34. Saving for vested rights. Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark 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 trade mark from a date prior:

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

The afore mentioned provision provides a safeguard to a prior user of the Trademark. If a party can prove user prior in point in time to that of the registration, or date of user of registered proprietor, which ever is earlier , then he may be protected under the provision of Trademarks Act 1999."

In fact this provision is meant for providing additional protection to a prior user of trade mark. The Hon'ble High Court of Delhi has reiterated this well settled proposition of law that the remedy of passing off is available against the Registered Proprietor.

The Trademark Registration is inconsequential in relation to relief pertaining to passing off, which is a common law remedy. Common law remedy is independent of Statutory remedy of Infringement.

The Hon'ble High Court of Delhi has observed that the Defendant has established its user since the year 2007. However in order to take advantage of Section 34 of the Trademarks Act 1999,the user has to be prior and continuous.

Though in the present case, the Hon'ble High Court of Delhi has discussed various bills and invoices put on record and after that observed that Defendant has established that it has been using the trademark NO TURN since the year 2007. However user of the Defendant was intermittent, hence the same was not given any benefit of Section 34 of Trademarks Act 1999.

However the Plaintiff was not granted injunction as the court observed that the Trademark NOTURN was descriptive in relation to mattress and that the Plaintiff has failed to prove any distinctiveness attached thereto.

As a summary it can be said that right of। prior user is better than any one including a registered proprietor. However in order to succeed in building up the case of prior use, as warranted under Section 34 of the Trademarks Act 1999, the party taking that defense must prove prior and continuous use. Intermittent and sporadic use of a trademark would not entitle a party to take advantage of Section 34 of Trademarks Act 1999.

Another important finding of the Hon'ble High Court of Delhi in the present case was that a descriptive Trade Mark can also be allowed be protected provided it proves the acquired distinctiveness. In the present case Plaintiff was non suited on the ground of failing in proving acquired distinctiveness in relation to its। descriptive Trade Mark NOTURN.

Case Discussed:
Date Of Judgement: 16.03.2020
Case No:(Cs) (Comm) 174/2019
Name Of Hon'ble Court: High Court Of Delhi
Name Of Hon'ble Judge: The Honourable Justice Mukta Gupta
Case Title: Peps Industries Pvt. Ltd. Vs Kurl On Limited-Mukta Gupta-Hj

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected], Ph no: 9990389539

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