Defence of Prior Use Not Allowed When Use of Mark Was Intermittent and Not Voluminous: Delhi HC [Read Judgment]

While rejecting the claim for permanent injunction, the Single Bench of Justice Mukta Gupta noted that when the trademark is not descriptive or has no distinctiveness, the claim for injunction doesn't stand.

In the present case, the Plaintiff had sought permanent injunction against the Respondent from providing any goods or services under the mark 'NO TURN', which the Plaintiff claimed to be the registered proprietor of.

Plaintiff submitted that besides being the registered owner of the trademark 'NO TURN', the Plaintiff has adopted and is in continuous use of the same since 15th January, 2008 which is evident from the trademark registration certificate, the orders and invoices of 'NO TURN labels for a continuous period of around 11 years.

While countering the claim of 'prior use' raised by the Defendant, the Plaintiff argued that the Defendant‟s commodity is also not continuously used commercially and there is no material on record that the Defendant is affixing 'NO TURN' labels on its products, and on the basis of the documents placed on record by the defendant along with the written statement no prior use is made out.

In addition to arguing 'prior use', the Defendant further submitted that it uses the 'NO TURN' mark along with its brand KURLON which is a well established and reputed brand in mattresses and hence there can be no confusion.

This was submitted in response to the argument made by the Plaintiff wherein it was said that since the Plaintiff and Defendant are using 'NO TURN' for identical goods i.e. mattresses, there is a clear likelihood of confusion amongst the customers.

While perusing the authorities cited by both the parties, the court identified and comprehensively listed the following principles with regard to the rights of the registered trademark of the same or similar trademark or prior user of the same or similar trademark:

1. Rights of a registered owner of the trademark though exclusive, are subject to various provisions and thus not absolute.
2. The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.
3. The right of the registered owner of the trademark is not higher in order to right of the person using an identical trademark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trademark prior to the user of the trademark by the registered owner. The user by other party has to be continuous, distinct from the user which is separate, isolated or disjointed and requires the commercially continuous use of mark in relation to the same goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute user of the mark.

The court, therefore, observed that the collective reading of the Trade Marks Act indicates that the action for passing off which is premised on the rights of the prior user generating a goodwill, shall be unaffected by any registration provided under the Act.

It was further observed that a trademark exists independently of the registration which merely affords a further protection under the Statute, the common law rights being left wholly unaffected.

While accepting the contention raised by the Defendant, the court noted that the manner in which 'No Turn' is used on the mattresses and from the brochure of the Defendant it is evident that the mark 'No Turn' is not used as a trademark/brand but to describe the quality of the mattress and thus the mattresses which do not require to be 'turned around' are labelled 'No Turn'.

While the court did accept that the Defendant is not entitled to the defence of prior use under section 34 of the Trade Mark Act as its usage was intermittent and not voluminous, it still refused to provide injunction to the Plaintiff as the mark 'NO TURN' is a descriptive mark. It highlighted:

'However, the plaintiff would still not be entitled to the relief of injunction for the reason the mark "NO TURN" is a descriptive mark. The plaintiff has placed no material on record to show that on the date of application or even on the date of registration plaintiff‟s trademark „NO TURN‟ had acquired the distinctiveness to achieve the status of a well known mark.'

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