INTERPLAY BETWEEN SECTION 11 AND SECTION 34 OF THE TRADE MARKS ACT, 1999
The Trade Marks Act, 1999 (hereinafter, the “Act”), aims to strike a balance between the rights of trade mark owners and the need for fair competition in the marketplace. Two pivotal provisions are Sections 11(4) and 34 of the Act which work together to reconcile the conflicting interests of prior users and registered proprietors, providing protection and clarity when trade marks overlap. These provisions are particularly significant in cases where a registered trade mark conflicts with the rights of someone who has been using the mark in the market before the registration. This article explores the interplay between these sections, illustrating how they collectively safeguard trade mark rights.
Section 11(4): Preventing Conflicts in Registration
Section 11 of the Act focuses on preventing the registration of marks that could create confusion or conflict with earlier trade mark. The aim is to protect the sanctity of the Register of Trade Marks and the interests of those who have built reputations based on their marks and avoid situations where new marks cane be registered and cause confusion in the marketplace. The earlier trade mark is defined in Section 11 as the mark that is:
a. Registered first; or
b. bears an earlier date of filing.
While the aim of Section 11 of the Act is to bar registration of an earlier trade mark however, Section 11(4) of the Act provides a mechanism that allows conflicting marks to coexist in the register under specific conditions, namely through consent by the earlier mark’s proprietor. Section 11 (4) of the Act emphasizes the importance of the consent of the prior user to resolve conflicts before registration, enabling new businesses to proceed with registration even when their mark may conflict with an existing one. This creates a framework for collaboration and mutual respect between businesses.
Section 34 of the Act: Safeguarding the Rights of Prior Users
While Section 11 of the Act provides a preventive mechanism for registration, Section 34 comes into play as a defensive mechanism for prior users of a trade mark. Section 34 ensures that the rights of individuals or entities who have used a mark continuously before its registration by another party are not overridden by the latter’s registration. It particularly protects those who have used a mark in commerce but have not registered it, ensuring their use is not disturbed by a subsequent registration of an identical or similar mark by someone else.
The essence of Section 34 of the Act is that it protects the first user of a mark, even if the user did not register it, from being infringed upon by a registered user. This is crucial in promoting the principle of priority of use over priority of registration. For Section 34 of the Act to apply, the following conditions must be met:
a. Continuous use of the mark by the prior user.
b. The use must have occurred before the date of registration of the subsequent user.
c. The use must be in relation to the same or similar goods or services.
Section 34 of the Act ensures that those who have built up goodwill through the use of a mark prior to another’s registration can prevent the later registrant from interfering with their established rights.
In the case of Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. [2019 (78) PTC 223 (Del)], the Delhi High Court, while evaluating the scope of Section 34 of the Trade Marks Act, held that “Section 34 defines when vested rights are saved. The said Section provides a defence in a suit for infringement and permits second registration of the same mark provided the second applicant had been continuously using that trademark from a date prior to the use or date of registration of the first proprietor/registered user's trade mark, whichever is earlier.”
Further, in the case of Peps Industries Private Limited v. Kurlon Limited [CS(COMM) 174/2019], the court while explaining the term ‘prior use’ held that merely adopting the mark does not give right to be a prior user of the mark, rather, continuous and voluminous use must be shown by the person claiming to be a prior user.
The scope of Section 11(4) of the Act was elaborated in the case of Mahesh Gupta v. Dilip Kumar Shukla 2021 (85) PTC 423 (IPAB), wherein, it was held that the mere fact that the respondent secured a registration while the applicant's trademark application was still pending does not automatically confer superior rights upon the respondent. In trademark law, rights are not solely determined by the act of registration but are fundamentally grounded in the principle of first use. Where the applicant can establish that their use of the mark predates the registrant’s use or claim, the applicant's mark attains the status of an ‘earlier trademark’ under the Act. This is particularly relevant in the context of Section 34, which recognizes and protects the rights of a prior user over a registered proprietor.
Thus, even if an individual holds a registration, the earlier use of the mark by the applicant, supported by evidence, takes precedence. The applicant's prior use establishes common law rights that outweigh the statutory rights derived from registration by the other party. This principle upholds the integrity of trademark use and prevents unjust enrichment through strategic or opportunistic registration.
Conclusion
While trademark registration serves as prima facie evidence of ownership, the bona fide use of the trademark alongside registration holds an equal significance. The concept of consent given under Section 11 of the Act, holds no significance when applied to a prior user of a trademark.
Often, companies or individuals who have used a trademark prior to filing for registration are compelled to submit their application on a "proposed to be used" basis due to insufficient documentation or lack of evidence supporting prior use. This can lead to the loss of priority in asserting rights under Section 34 of the Act and may hinder their ability to prevent subsequent users from adopting an identical or similar mark for identical or similar goods or services.
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