Trade Mark - Sec.34 and Sec.47 - First User rule & Abandonment of right for not using for a period of 5 years 3 months from the date of registration - Interim Injunction pending suit - Apex court held that since the Plaintiff-Respondents have alleged, and have prima facie supported with proof, that they had already been using their trademark well before the attempted user of an identical or closely similar trademark by the Defendant-Appellant, the former would be entitled to a temporary injunction, in light of the abovementioned ‘first in the market’ test. We find that the Plaintiff-Respondents have made out a prima facie case. The two other factors in an interim injunction, namely the balance of convenience and an irreparable loss, are both in favour of the Plaintiff- Respondents, given the potential loss of goodwill and business they could suffer should an injunction be denied. The Defendant-Appellant has been injuncted from using the mark ROFOL since 2005, after having launched products bearing the mark only in the previous year, so the balance of convenience is in favour of allowing the injunction to continue. - Appeal dismissed-2015 S.C.MSKLAWREPORTS

 Trade Mark - Sec.34 and Sec.47 - First User rule & Abandonment of right for not using for a period of 5 years 3 months from the date of registration - Interim Injunction pending suit - Apex court held that since  the Plaintiff-Respondents have alleged, and  have  prima  facie  supported  with proof, that they had already been using  their  trademark  well  before  the attempted  user  of  an  identical  or  closely  similar  trademark  by  the Defendant-Appellant,  the  former  would  be   entitled   to   a   temporary injunction, in light of the abovementioned ‘first in the market’  test.  We find that the Plaintiff-Respondents have made out a prima  facie  case.  The two  other  factors  in  an  interim  injunction,  namely  the  balance   of convenience and an irreparable loss, are both in favour  of  the  Plaintiff- Respondents, given the potential loss of goodwill and  business  they  could suffer should an injunction be  denied.  The  Defendant-Appellant  has  been injuncted from using the  mark  ROFOL  since  2005,  after  having  launched products bearing the mark only in the  previous  year,  so  the  balance  of convenience is in  favour  of  allowing  the  injunction  to  continue.  - Appeal dismissed-2015 S.C.MSKLAWREPORTS

This “first user” rule  is  a  seminal  part  of  the  Act.


Section  34  of  the  Trade  Marks  Act,  1999  (the  Act)   deserves
reproduction herein:
34. Saving  for  vested  rights.—Nothing  in  this  Act  shall  entitle  the
proprietor or a registered user of registered trade mark to  interfere  with
or restrain the use by any person of a trade mark identical with  or  nearly
resembling it in relation to goods or services in  relation  to  which  that
person or a predecessor in title of his has  continuously  used  that  trade
mark from a date prior—
(a) to the use of the first-mentioned trade mark in relation to those  goods
or services be the proprietor or a predecessor in title of his; or
(b) to the date  of  registration  of  the  first-mentioned  trade  mark  in
respect of those goods or services in  the  name  of  the  proprietor  of  a
predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse  (on  such  use
being proved), to register the second mentioned trade mark  by  reason  only
of the registration of the first mentioned trade mark.

This Section palpably holds that a proprietor of a trade mark does not  have
the right to prevent the use by another party of  an  identical  or  similar
mark where that user commenced prior to the user or date of registration  of
the proprietor.
This “first user” rule  is  a  seminal  part  of  the  Act.
While the case of the Plaintiff-Respondents is furthered by  the  fact  that
their user commenced prior to that of the Defendant-Appellant, the  entirety
of the Section needs to be  taken  into  consideration,  in  that  it  gives
rights to a subsequent user when its user  is  prior  to  the  user  of  the
proprietor and  prior  to  the  date  of  registration  of  the  proprietor,
whichever is earlier.
 In the facts of the  case  at  hand,  the  Defendant-
Appellant  filed  for  registration  in  1992,  six  years  prior   to   the
commencement of user by the Plaintiff-Respondents.

The  Defendant-Appellant
was, thus, not prevented from restraining the Plaintiff-Respondents’ use  of
the similar mark PROFOL, but the intention  of  the  Section,  which  is  to
protect the prior user from the proprietor who is not  exercising  the  user
of its  mark  prima  facie  appears  to  be  in  favour  of  the  Plaintiff-
Respondents.

Section 47 of the Act  is  in  the  same  vein  and  statutory  strain
inasmuch as it postulates the possibility of a registered mark  being  taken
off the register on an application  being  made  by  any  aggrieved  person,
inter alia, on the ground that for a continuous period  of  five  years  and
three months from the date on which the trademark was registered, there  was
no bona fide use thereof.
 In the case in  hand,  prima  facie,  it  appears
that for over five years after a registration application was  made  by  the
Defendant-Appellant, the mark was not used.   Facially,  the  Act  does  not
permit the hoarding of or appropriation without utilization of a  trademark;
nay the Defendant-Appellant has allowed or acquiesced in  the  user  of  the
Plaintiff-Respondents for several  years.
 The  legislative  intent  behind
this Section was to ordain that an applicant of a trademark does not have  a
permanent right by virtue of its application alone. Such a right is lost  if
it is not exercised within a reasonable time.


since  the
Plaintiff-Respondents have alleged, and  have  prima  facie  supported  with
proof, that they had already been using  their  trademark  well  before  the
attempted  user  of  an  identical  or  closely  similar  trademark  by  the
Defendant-Appellant,  the  former  would  be   entitled   to   a   temporary
injunction, in light of the abovementioned ‘first in the market’  test.
 We
find that the Plaintiff-Respondents have made out a prima  facie  case.
The
two  other  factors  in  an  interim  injunction,  namely  the  balance   of
convenience and an irreparable loss, are both in favour  of  the  Plaintiff-
Respondents, given the potential loss of goodwill and  business  they  could
suffer should an injunction be  denied.
The  Defendant-Appellant  has  been
injuncted from using the  mark  ROFOL  since  2005,  after  having  launched
products bearing the mark only in the  previous  year,  so  the  balance  of
convenience is in  favour  of  allowing  the  injunction  to  continue.
 In
Milmet, this Court  had  taken  note  of  the  fact  that  the  unsuccessful
litigating party had  in  the  duration  of  the  litigation  started  using
another mark, and found that this would prima facie assume  significance  in
assessing “irreparable loss”.

 For manifold and myriad reasons,  we  are  of  the  opinion  that  the
decision of the Trial Court, as affirmed by the First  Appellate  Court,  is
reasonable and judicious,  and  does  not  suffer  from  perversity  by  any
dialectic  that  the  Defendant-Appellant  may  proffer.   The   Appeal   is
accordingly dismissed, but with no order as to costs. -2015 S.C.MSKLAWREPORTS

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