When Use Prevails Over Registration: The Role of Section 34

Trademark law is fundamentally designed to protect the identity, goodwill, and reputation associated with a business’s goods or services. A trademark serves as a source identifier, enabling consumers to distinguish between competing products in the marketplace. While the Trade Marks Act, 1999, provides a statutory framework for the registration and enforcement of trademarks in India, it does not treat registration as the sole source of trademark rights. Instead, Indian trademark jurisprudence continues to recognize the supremacy of prior use over subsequent registration.

One of the most significant statutory provisions reinforcing this principle is Section 34 of the Trade Marks Act, 1999. This provision acts as a protective shield for those who have been using a trademark honestly and continuously before the registration or use of a similar mark by another party. By preserving the rights of prior users, Section 34 ensures that trademark law remains equitable and does not reward opportunistic registrations that undermine established commercial goodwill.

At this stage, professional guidance from platforms like TMWala can help businesses assess the strength of their prior use and document it effectively.

The Philosophy Behind Section 34

At its core, Section 34 embodies the long-standing principle that trademark rights arise from actual use in commerce rather than from mere registration. Unlike certain jurisdictions that follow a strict “FIRST-TO-FILE” approach, Indian trademark law aligns itself with the “FIRST-TO-USE” doctrine, which means the Prior User. This approach recognizes that the commercial value of a trademark lies in the reputation it acquires through use and consumer recognition.

Section 34 explicitly provides that a registered proprietor cannot interfere with the use of an identical or similar trademark by a person who has been using the mark continuously from a date before the registered proprietor’s use or registration, whichever is earlier. In effect, this provision curtails the absolute exclusivity ordinarily associated with registration and prevents misuse of statutory rights to suppress genuine prior users.

Section 34 as an Exception to Registration Rights

Registration under the Trade Marks Act confers several benefits, including statutory protection, nationwide enforceability, and evidentiary advantages. However, these benefits are not unconditional. Section 34 operates as a statutory exception that limits the enforcement rights of a registered proprietor when faced with a claim of prior use.

This provision ensures that trademark law does not become a tool for unjust enrichment. A party that has invested time, effort, and resources into building goodwill under a particular mark cannot be displaced merely because another party succeeded in obtaining registration at a later stage. Thus, Section 34 preserves commercial honesty and discourages bad-faith registrations.

Essential Requirements of Prior Use

For a party to successfully invoke the protection under Section 34, certain essential conditions must be fulfilled:

1. The mark used by the prior user must be identical or deceptively similar to the registered trademark. The similarity must be such that it relates to the same source-identifying function.
2. The use must be continuous and consistent. Sporadic, casual, or token use is insufficient. The claimant must demonstrate that the mark has been used in the ordinary course of trade without significant interruption.
3. The mark must have been used in relation to the same or similar goods or services. Protection under Section 34 does not extend to unrelated categories where consumer confusion is unlikely.

Finally, the claimant must establish that such use predates either the date of registration or the date of first use claimed by the registered proprietor, whichever is earlier. Documentary evidence, such as invoices, advertisements, packaging, and promotional materials, often plays a decisive role in establishing this timeline.

TMWala assists businesses in compiling and validating such evidence to strengthen claims of prior use during oppositions, rectifications, or litigation.

The Interplay Between Common Law and Statutory Rights

Trademark protection in India is not confined to statutory registration. Even before the enactment of the Trade Marks Act, businesses could protect their marks under the common law remedy of passing off. This remedy continues to coexist alongside statutory infringement actions.

Section 34 reflects this dual protection system by reinforcing the relevance of common law rights. While registration provides procedural advantages, it does not extinguish pre-existing common law rights acquired through use. Instead, the statute acknowledges and incorporates these rights, thereby creating a harmonious balance between legislative protection and judicial principles.

Vested Rights Arising From Prior Use

The concept of vested rights is central to the doctrine of prior use. Once a trader adopts a mark and uses it continuously in commerce, a proprietary interest in the mark comes into existence. This interest is not dependent on registration but is derived from consumer association and goodwill.

Such vested rights cannot be lightly displaced. Even if another party registers the same or a similar mark at a later stage, the prior user’s rights remain intact to the extent of their established use. Section 34 safeguards these vested rights by allowing the prior user to continue using the mark without interference from the registered proprietor.

The Importance of Continuous Use

Continuity of use is a determining factor in assessing claims under Section 34. The law does not prescribe a fixed duration of use; rather, it focuses on the quality and consistency of use. The mark must be actively used in trade, indicating a genuine commercial presence.

Any prolonged abandonment or unexplained gaps in use may weaken a claim of prior use. Courts carefully evaluate whether the mark remained in the public domain through ongoing commercial activity, thereby retaining its source-identifying function.

Judicial Interpretation and Evolution

Indian courts have consistently emphasized the primacy of prior use in trademark disputes. Judicial pronouncements have clarified that registration is not the genesis of trademark rights but merely a formal recognition of rights that already exist.

In several landmark decisions, courts have reiterated that a prior user’s rights prevail over those of a subsequent registrant. These rulings underscore the principle that trademark law aims to prevent consumer deception and protect established goodwill rather than reward procedural formalities.

Courts have also recognized that prior use need not be confined within India in certain circumstances. Where a mark has acquired international reputation and goodwill that spills over into the Indian market, such use may be considered relevant for determining priority, particularly in an increasingly globalized economy.

Prior Use as a Defence and a Sword

Section 34 functions both as a defence and as a strategic tool. As a defence, it enables a prior user to resist infringement actions initiated by a registered proprietor. As a proactive measure, it strengthens passing off claims by reinforcing the legitimacy of the prior user’s rights.

This dual utility ensures that honest traders are not compelled to abandon their marks or rebrand merely because another party secured registration. Instead, the law protects commercial continuity and consumer trust.

Balancing Competing Interests

Trademark law must strike a careful balance between encouraging registration and protecting genuine commercial use. Section 34 achieves this balance by recognizing the importance of registration while preventing its misuse.

If registration were treated as absolute, it would incentivize parties to appropriate existing marks and leverage statutory protection to stifle competition. Conversely, by prioritizing prior use, the law ensures that trademark protection remains rooted in fairness, honesty, and consumer perception.

Conclusion

Section 34 of the Trademarks Act, 1999, stands as a cornerstone of Indian trademark jurisprudence, reaffirming the principle that use is the foundation of trademark rights. By protecting prior users against the claims of subsequent registrants, the provision ensures that trademark law remains aligned with commercial realities and ethical business practices.

The consistent judicial endorsement of the prior use doctrine reflects the courts’ commitment to preventing deception, safeguarding goodwill, and upholding vested rights. In doing so, Section 34 bridges the gap between common law traditions and statutory protections, reinforcing the idea that trademarks derive their true value not from registration certificates, but from the trust and recognition they command in the marketplace.

Ultimately, the provision serves as a reminder that trademark law is not merely a procedural mechanism but a tool to promote fairness, protect honest enterprise, and preserve the integrity of commercial identity.

FAQs

1. What is Section 34 of the Trade Marks Act, 1999?
   Section 34 protects the rights of a prior user of a trademark against a later registered proprietor.
2. Does trademark registration create absolute rights?
   No, registration is subject to the rights of a prior and continuous user under Section 34.
3. What is meant by the “first-to-use” principle?
   It means trademark rights arise from actual use in commerce rather than mere registration.
4. Who can claim protection under Section 34?
   Any person who has honestly and continuously used a trademark before another’s registration or use.
5. Is continuous use mandatory to claim prior use rights?
   Yes, the use must be consistent and uninterrupted, not sporadic or token.
6. Can a registered trademark owner stop a prior user?
   No, a registered proprietor cannot restrain a genuine prior user under Section 34.
7. Does prior use apply to similar goods or services?
   Yes, the protection applies only when the goods or services are the same or similar.
8. Is registration completely irrelevant under trademark law?
   No, registration provides statutory benefits but does not override prior use rights.
9. Can prior use be a defence in infringement cases?
   Yes, Section 34 can be used as a defence against infringement claims.
10. Why is Section 34 important in trademark law?
    It ensures fairness by protecting goodwill built through genuine and honest use of a trademark.