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A trademark is a symbol or word, which distinguished your product from other products it helps the consumers to identify your goods and services and protects your product. Trademarks Act, of 1999 regulates trademarks use and registration of trademarks it is a part of intellectual property rights. Trademarks give rights to the registered proprietor to use his trademark and prevent others from using his trademark without his permission trademarks help the user in enjoying his innovation.

The principle of ‘prior user’ means that someone using a similar trademark before the registered trademark proprietor so the law will give priority to the prior user and prior user rights will prevail over the subsequent user even though the subsequent user is registered. It is a well-known principle that prior users will trump later trademark registration. It is also known as the Doctrine of prior use. Several Indian Court also recognizes the principle of ‘prior user’ where several times Indian courts held that the prior user right always would be considered over the registered user.

Section 28 of Trade Marks Act, 1999

According to Sec 28, the registered trademark proprietor get the exclusive right to use the trademark and this section prohibits others from using similar or identical mark but there is an exception in this section which give the right to the prior user to override the subsequent user even subsequent user has been registered. The Sec 28 of the Trade Mark Act gives rights to the registered user is not an absolute right.

Section 34 of Trade Marks Act, 1999

According to Sec 34, “the proprietor of registered trademark cannot interfere with the use of any similar mark if the person is continuously using the mark before the proprietor trademark registration” This section gives protection to the rights of the prior user and protects them from being violated by the registered user. The rights of the prior user are superior to the registered trademark proprietor. Prior user work as a defense in trademark cases. This section works as an exception to Section 28 of the Trademark Act.

Conditions for ‘Prior Use’

These are the conditions of prior use

  1. The trademark must be in continuous use in India.
  2. The proprietor must use the trademark.
  3. The use of the mark must be in relation to the goods and services, registered by the registered proprietor.
  4. The trademark must be in use by claiming person before the date of trademark use or registered by the proprietor.

Dispute ‘First User’ Trademark

This Doctrine of ‘prior use’ can be only used if a person using the trademark before the registered trademark proprietor and if it fulfils the essential given in Section 34 of the Trademark Act. To prove the prior use disclosure of Sales reports, company turnover, advertisements, and website this evidence is enough to know the prior user of that trademark these documents are the best evidence to show that the trademark was used by the person before the registered trademark proprietor.


Hatsun Agro Product Ltd v Sri Ganapathy Dairy. In a recent case, Madras High Court rejected the plaintiff’s suit on basis of the principle of ‘prior use’ court held defendant was the prior user. Plaintiff manufactured and marketed food and dairy products the plaintiff used the mark ARUN since 1970 the plaintiff complained that the defendant is also using the same mark ARUN for ghee. Plaintiff send a notice defendant rejected the notice and claimed that the defendant is using the mark ARUN since 1989, The plaintiff claimed to use the ARUN mark since 2006 for ghee. Defendant proved that they were using the ARUN mark since 1990. Plaintiff registered the ARUN trademark in 2013 but the plaintiff was marketing ghee under the HUTSUN trademark only. The court held that the defendant was a prior user because the plaintiff had not used the ARUN mark for ghee he used the ARUN mark for other products he start using the ARUN mark for ghee in 2006. Which was later to the defendant so the defendant’s rights were protected under the principle of prior user this case highlighted the principle of the prior user.

Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors. In this case, Hon’ble Supreme Court held that registration of a trademark does not create a monopoly right to prevent other parties from using the same mark if that use started before the use and registration of the proprietor-registered trademark. Court also advised the companies to conduct proper research before taking the trademark to avoid future complications.

Turning Point Institute Private Limited v. M/s Turning Point. Plaintiff, Turning Point Institute Private Limited claimed that they used the mark TP TURNING POINT since 1994, on the other side defendant M\S Turning Point claimed to use the mark TP TURNING POINT since 1998. The defendant’s mark was registered in 2005. The plaintiff showed the evidence to prove their prior use. The Hon’ble court observed that based on the evidence given by the plaintiff the rights of the plaintiff deserved to be protected court give the decision in favour of the plaintiff and prohibited the defendant from using the TP TURNING POINT mark.

Mohideen v. P. Sulochana Bai. In this case, the court discussed Section 34 of the Trade Mark Act and discussed the principle of prior use court pronounced that the provision is such that the prior user rights will be considered superior over the registered trademark user and the registered trademark proprietor shall have no right to interfere the prior user.


In India, prior usage of trademarks gives priority over the registered trademark to protect the right of the innovator, and the prior user is protected from passing off and infringing on the trademark. Even though Sec 28 of the Trade Mark Act gives the exclusive right to the registered proprietor but the right is not absolute. Trade Marks Act protects those users who are using the mark without registration and protects their rights from being violated by the registered user. Sec 34 of the Trade Mark Act discussed the doctrine of ‘prior use’ which means the prior user will be always considered superior to the registered trademark user and his rights prevail over the registered trademark user. It is the duty of the company, organization, and proprietor who is seeking a trademark to do proper due diligence before taking the trademark and make sure to maintain the proper records of the use of the trademark to prevent future complications.

Author(s) Name: Himanshu Bisht (Graduate, Maharshi Dayanand University)