Prior use: good defense for trademark infringement?

1,825 Views Updated: 01 May 2018
Follow Post
Prior use: good defense for trademark infringement?

The reason that companies register their trademark is to safeguard their product and to distinguish it from that of their competitors. Registration of a trademark gives them right to sue for the infringement and ask for damages and injunction against the proprietor. The goodwill of their company is embodied in their trademark and if one comes to know that their trademark is being used by some other business entity, the purpose of registering one negates.

In Indian law, not only the registered trademark user is protected but there is provision for the protection of unregistered trademark also. Prior use is one of them. Prior use of trademark means that the registered trademark is being used by a third party commercially for the similar type of goods and services. In certain instances, the right of a proprietor, using the unregistered trademark is protected instead of the registered user.

Statutory provision

Prior use is protected under section 34 of Indian trademark law. This provision has an overriding effect which prevents the owner of the registered trademark from interfering with the use of the trademark by another person but the condition laid down by the act is that the proprietor must show that the commercial use of the trademark has been prior to registration of the already registered trademark.

These conditions need to be conformed to in order to gain protection under Indian trademark law.

So in order to save their brand name business or individuals are known to abandon the trademark and look for another one, as registering the same trademark confuses customers and lowers the brand value. Therefore the common practice seen while registering this type of trademark is that objections are raised by the proprietor using the trademark when the trademark is advertised in the journal.

Requisite for prior-use acknowledgment

The defense under section 34 can only be granted if the proprietor complies with the requisite for acknowledgment of prior use as it has an effect of diluting the protection which is provided to the registered owner. The court is clear and that the material evidence establishing prima facie use and a continuous use prior to the date of start of the use of the mark.

It is important that mark should be similar or identical to that of the mark registered. For a person to show that there has been prior use he needs to prove that the mark was being used commercially prior to the registration of the trademark and the use of the mark should be in relation with the goods and services for which the mark is registered.


The first user principle is an influential part of the Act and it has always been superiority. The proprietor who has to prove prior use will have to prove the courts or Indian registrar office for the trademark that the right to use the trademark with regard to goods and services is proper as it would give him quasi-proprietary right to exclusive use of trademark commercially.

For any trademark registration query contact :

Posted by: archi Posts: (5) Opinions: (2) Points: 285 Rank: 600

Related polls