Recently, the Delhi High Court in Parle Products Private Limited vs The Registrar of Trade Marks & Anr, C.A.(COMM.IPD-TM) 49/2025 reaffirmed a basic principle, i.e., in cases where marks are filed on a “proposed-to-be-used” basis, priority in application prevails over subsequent commercial use.

Facts:

Respondent No. 2, Avon Agro Industries (hereinafter “Avon”), filed for trademark registration of the mark “20-20” on September 27, 2007. The Appellant, Parle Products, a famous brand engaged in the business of biscuits, cookies, confectionery, etc., similarly adopted the mark “20-20” in 2007, and filed its trademark application on October 4, 2007, merely seven days after Avon. Both applications were filed on a “proposed to be used” basis, i.e., neither of them had commenced actual use of the mark at the time of filing. Despite being the subsequent applicant, Parle obtained registration first, and when Avon’s mark was advertised, Parle initiated opposition proceedings against the mark. However, the Trademark Registry dismissed the opposition, holding that Avon was the prior adopter of the trademark based on its earlier date of filing the application and thereby upheld the registration of Avon’s mark. Aggrieved by this, Parle filed an appeal before the Delhi High Court.

Contentions:

The counsel for Parle contended that the Registrar erred in failing to consider that Parle had launched products under the trademark “20-20” between 2007 and 2008, and had been continuously using the mark since 2008-09, as evidenced by invoices. It was argued that the Registrar merely relied on the fact that Avon had filed its application one week prior to Parle. Parle further submitted that the Registrar overlooked the established “first in the market” test, which states that priority is granted to the party who first uses the mark in the market, and not to the prior adopter. On this basis, it was argued that the Avon’s mark ought to be removed. It was also contended that Avon had no bona fide intention to use the mark, given that it had not been put to use by them, and such non-use amounts to abandonment.

On the other hand, Avon contended that it was the prior adopter of the mark based on the date of filing of the application for goods in the same class as that of Parle and therefore had prior rights over Parle. It was further submitted that it had diligently pursued the application for registration for over 17 years. It was also submitted that Parle had filed its application subsequently, and that the examination report issued by the Trade Marks Registry cited Avon’s mark as conflicting.  Furthermore, it was submitted that Parle had argued before the Registry that the marks, when viewed as a whole, were inherently distinctive and visually, phonetically, and conceptually, and had expressed its willingness to restrict its specification of goods to ‘biscuits’. Therefore, Parle cannot be allowed to approbate and reprobate its contentions. It was further contended that even though the mark was allowed for biscuits only, the advertisement erroneously specified a broader range of goods. Avon further contended that since both applications were filed on a “proposed to be used” basis, Avon’s subsequent use of the mark in the market should not be a reason to render its mark ineligible for registration.

Judgment:

The Court observed that neither party had commenced use of the mark prior to filing their respective applications. It also noted that despite being aware of Avon’s prior application through the examination report, Parle had proceeded with its own application. Relying on established precedents, the Court held that when identical or similar marks are applied for on a “proposed to be used” basis, the prior applicant would have superior rights under Section 18 of the Trade Marks Act. The Court further held that if one entity begins using the mark after filing its application but prior to registration, such use does not confer any special benefit to it over the prior applicant. Hence, the appeal was accordingly rejected by the Court, thereby allowing Avon’s mark to remain on the Register. Thus, the Court reaffirmed that, in cases where marks are filed on a “proposed to be used” basis, the prior applicant has priority over a subsequent market user. Therefore, priority in application remains the essential criterion for protecting trademark rights.

It is significant to note that had the Registry examined the application based on the date of filing, the present dispute would not have arisen in the first place, a position consistently advocated by industrial experts. Furthermore, the fact that a mark took 17 years to get registration shows a significant setback for any brand which seek to protect its intellectual property. Hence, the need of the hour is to create a system where trademark applications are examined and registered efficiently and within a reasonable timeframe, thereby minimizing unnecessary disputes and reducing the litigation burden on the Courts.

Written by Meghana SS