Two companies filed for “20-20” seven days apart, both on a “proposed to be used” basis. One later launched products under it; the other didn’t. Who wins? The Delhi High Court’s answer: when neither had used the mark at filing, the first to file prevails.
The dispute
In Parle Products Private Limited v. The Registrar of Trade Marks & Anr [C.A.(COMM.IPD-TM) 49/2025]:
- Avon Agro Industries filed for “20-20” on 27 September 2007;
- Parle Products (the famous biscuit/confectionery brand) filed for “20-20” on 4 October 2007 — seven days later.
Both were filed “proposed to be used” — neither had actually used the mark at filing. Despite being the later applicant, Parle got registered first, and opposed Avon’s mark when advertised. But the Registry dismissed the opposition, holding Avon the prior adopter by its earlier filing date, and upheld Avon’s registration. Parle appealed.
The arguments
Parle: the Registrar ignored that Parle launched products under “20-20” in 2007–2008 and used it continuously since 2008–09 (per invoices); the Registrar wrongly relied on Avon’s one-week-earlier filing; the “first in the market” test grants priority to the first user, not the prior adopter; and Avon’s non-use amounted to abandonment.
Avon: it was the prior adopter by filing date, had diligently pursued registration for 17 years, and Avon’s mark was cited as conflicting in Parle’s examination report. Parle had itself argued (before the Registry) the marks were distinct and offered to restrict to ‘biscuits’ — so it couldn’t approbate and reprobate. And since both were “proposed to be used,” Avon’s subsequent use shouldn’t render its mark ineligible.
The ruling
The court noted neither party used the mark before filing, and that Parle proceeded despite knowing of Avon’s prior application (from the examination report). Relying on precedent, it held: when identical/similar marks are filed on a “proposed to be used” basis, the prior applicant has superior rights under Section 18. And if one party starts using the mark after filing but before registration, that use confers no special benefit over the prior applicant. The appeal was rejected, leaving Avon’s mark on the register.
The principle: for “proposed to be used” marks, priority in application — not later market use — is the essential criterion.
The systemic point
Had the Registry examined by filing date, this dispute wouldn’t have arisen. And a mark taking 17 years to register is a serious setback for brand protection. The need of the hour: examine and register applications efficiently and within a reasonable timeframe, to minimise disputes and reduce the courts’ burden.
The takeaways
- First to file wins for “proposed to be used” marks — priority in application prevails (Section 18).
- Post-filing use confers no advantage over a prior applicant.
- Don’t approbate and reprobate — Parle’s earlier “distinct marks” argument counted against it.
- Registry delay breeds disputes — 17 years to register is a systemic problem.
Frequently asked questions
If two identical marks are filed “proposed to be used”, who has priority? The prior applicant — the first to file — has superior rights under Section 18, as the Delhi HC held in Parle v. Registrar.
Does using the mark after filing but before registration help? No — the court held such post-filing use confers no special benefit over a prior applicant when both filed on a proposed-to-be-used basis.
What is the “first in the market” test, and did it apply here? It grants priority to the first user; but where neither party used the mark at filing, the court held priority in application prevails instead.
Why did the case highlight a systemic issue? Because examining by filing date would have avoided the dispute, and a 17-year registration timeline shows the need for faster, efficient prosecution.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India