Section 34 of the Trade Marks Act, 1999 is arguably one of the most fundamental sections of the trademark law in India. The primary objective of the trademark law is to protect the rights of the genuine prior users and original adopters of the trademark and section 34 is one of the tools to ensure exactly that. This article will delve deep into the intricacies of Section 34 of the Trade Marks Act, 1999, related doctrines and case laws.
Basis of Section 34 of the Trade Marks Act, 1999
Section 34 of the Trade Marks Act, 1999 derives its existence from the common law doctrine of ‘Prior Use’. The Prior Use Doctrine aims at safeguarding the rights of prior users of a trademark. Similarly section 34 of the Trade Marks Act, 1999 also aims at protecting the rights of the prior user and adopter of a trademark by prohibiting the registered proprietor of a trademark to interfere with or restrain the use of the identical or similar trademark by its prior user.
For Example: A lawfully adopts and starts to use the mark ‘Banana’ in relation to Footwear in 1999 and continues to use such a mark in trade without acquiring any trademark registration for the same. Later, in the year 2005, B adopts the mark ‘Banannaa’ in relation to the same set of goods and thereafter also acquires trademark registration for the same. However, after acquiring the trademark registration, B tries to restrain the use of the mark ‘Banana’ by A on account of its trademark registration. In such case, B’s act of trying to restrain the use of the mark ‘Banana’ by A is barred by the provisions of section 34 of the Trade Marks Act, 1999.
Here, although A did not acquire the registration of its trademark, this does not take away his right as the adopter, originator and prior user of the trademark. This is exactly where the provisions of section 34 of the Trade Marks Act, 1999 comes into play. In the aforementioned illustration, A has the common law rights as the prior user continue to use its mark without interruption for any subsequent user or adopter.
Understanding Section 34 of theTrade Marks Act, 1999
Section 34 gives better rights to prior user as compared to a registered proprietor by taking away the registered proprietor’s right to interfere with or try to restrain the use of an identical trademark by a prior user. This basically means that registered proprietor’s rights cannot grant it superiority over a prior user.
This provision recognises the common law rights of a prior user accumulated overtime due to use the continuous use of its mark in the market and grants it superiority over the statutory rights acquired by someone due to registration.
- Registration gives Statutory Rights
- Use gives common law rights
Generally, when a person who is the original adopter, continuous user and bona fide originator of the mark, gets its trademark registered, such person is awarded with both statutory as well as common law rights arising from its mark. However, section 34 of the Trade Marks Act, 1999 specifically talks about the situation when such statutory and common law right are held by separate person on account of their registration and prior use respectively.
Essentials of Section 34 of theTrade Marks Act, 1999
The following are the essential conditions for the applicability of this Section 34 of the Trade Marks Act, 1999:
- The third party must be using a mark which is identical to the registered mark;
- Such mark must be use in relation to similar set of goods and services as the registered mark;
- Such use of the identical mark must be of a prior date of use than the registered mark;
- Such use by the third party must be continuous and uninterrupted;
The term “USE” under section 34 of the Trade Marks Act, 1999 means continuous and consistent use for a substantial time period. prior to the date of filing or date of use of the registered mark. Such “USE” shall not be broken or intermittento. Use must be uninterrupted and such that would sufficiently generate recognition of the mark of the prior user in the market and trade circle.
Prior Use Vs. Registration
It is very common in trademark cases for there to be a fight between prior use and registration. This dispute was finally and conclusively settled by the Hon’ble Supreme Court in the case of S. Syed Mohideen vs P. Sulochana Bai, https://indiankanoon.org/doc/149416858/, has categorically and vehemently held that prior use is superior than registration. Hon’ble Court also held that the even the registered proprietor cannot interfere with the rights of prior user.
A similar finding was made by the Hon’ble court in the case of N.R. Dongre And Ors vs Whirlpool Corporation, wherein the Hon’ble Supreme court recognised the trans-border reputation of Whirlpool’s mark and, owing to its prior use, substantial transborder recognition and goodwill, granted Whirlpool protection against trademark squatting and passing off.
To secure protection under section 34, the prior user must establish bona fide adoption and good faith usage with substantial corroborating evidence.
Conclusion
The prior use doctrine, section 34 of the trademark law as well as passing off rights under granted under section 27, all aim to protect the rights of prior user from undue exploitation from later registrants. Indian courts have also time and again clarified its stance on this issue and consistently upheld the rights of prior users, thereby, granting assurance to actual originators and bona fide adopters that their rights remain secured irrespective of trademark registration.
