The Delhi High Court affirmed that, where two parties file trademark applications on a "proposed to be used" basis, the applicant with the earlier filing date retains priority even if the other party can demonstrate earlier market use. The decision clarifies the interplay of Sections 18, 34 and 11 of the Trade Marks Act, 1999, and rejects the appellant’s claim of estoppel for contradictory statements.
Background & Facts
The Dispute
The appellant, Parle Products Pvt. Ltd., sought to invalidate the registration of the mark “20-20” in Class 30 granted to respondent No. 2. Parle claimed it was the original and honest adopter of the mark, having used it commercially since 2007-2008, and argued that the “first in the market” rule should give it priority over the respondent’s earlier filing.
Key Facts
- 27.09.2007: Respondent No. 2 filed trademark application No. 1606126 for “20-20” (proposed-to-be-used basis).
- 04.10.2007: Parle filed applications No. 1608181 (T20), 1608182 (TWENTY-20) and 1608183 (20-20) for the same mark.
- 2009-2008: Parle began using “20-20” on biscuits and related products.
- 10.08.2020: Respondent No. 2’s application was advertised in Trade Marks Journal No. 1960.
- 25.11.2020: Parle filed a notice of opposition to respondent No. 2’s application.
- 01.02.2021: Respondent No. 2 filed its counter-statement.
- 16.11.2021: Parle filed evidence under Rule 45.
- 09.01.2023: Respondent No. 2 filed evidence under Rule 46.
- 17.04.2025: Final hearing before the Registrar; parties directed to file written submissions.
- 29.04.2025: Registrar dismissed Parle’s opposition and allowed registration of respondent No. 2’s mark.
- 10.03.2026: Single Judge of the Delhi High Court dismissed Parle’s appeal against the Registrar’s order.
- 28.07.2026: Division Bench delivered the present judgment, upholding the Single Judge’s order.
Procedural History
- 29.04.2025: Registrar’s order dismissing opposition (Opposition No. 1075195).
- 10.03.2026: Appeal before Single Judge (C.A. (COMM.IPD-TM) 49/2025) dismissed.
- 28.07.2026: Appeal filed as LPA 316/2026; Division Bench heard and delivered judgment.
Parties' Positions
- Appellant (Parle Products Pvt. Ltd.): Asserted that priority is determined by first commercial use, not filing date; relied on Neon Laboratories Ltd. v. Medical Technologies Ltd. and Section 34 to claim protection as prior user.
- Respondent No. 2: Contended that its earlier filing date gave it priority under Section 18; argued that Parle’s later use could not defeat the statutory right conferred by registration.
Relief Sought
Parle sought (a) setting aside of the Single Judge’s order, (b) quashing of the Registrar’s order granting registration to respondent No. 2, and (c) any further relief the Court deemed appropriate.
The Legal Issue
Does the “first in the market” principle under Section 34 of the Trade Marks Act, 1999, override the statutory priority granted by an earlier filing date under Section 18 when both parties have filed applications on a “proposed to be used” basis?
Arguments Presented
For the Appellant
- Prior use creates goodwill and therefore, under Section 34, the prior user is entitled to protection against a later registrant.
- Cited Neon Laboratories Ltd. v. Medical Technologies Ltd. to argue that the Supreme Court gave primacy to the “first in the market” test, even in infringement contexts.
- Maintained that the Registrar erred by ignoring Parle’s continuous use since 2007-2008.
For the Respondent
- Section 18 gives priority to the applicant who first files, irrespective of subsequent use, unless the later user can prove use before the filing date.
- Relied on Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. and Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. to show that the filing date is the decisive factor for registration.
- Asserted that Parle’s later statements in the examination report created an estoppel (approbation and reprobation) preventing it from now claiming prior-user rights.
The Court's Analysis
The Court began by interpreting the relevant statutory scheme. Section 18(1) mandates that any person claiming to be proprietor of a mark, whether used or proposed to be used, may apply for registration. The provision does not condition priority on actual use; it merely requires a bona-fide intention to use. Consequently, the date of filing becomes the reference point for determining rights under the Act.
The Court examined Section 34, which protects a prior user against a later registrant, but emphasized that the protection is subject to the provisions of Sections 11, 18 and 9. The Court held that when both parties file on a “proposed to be used” basis, the earlier filing date under Section 18 trumps the later user’s claim under Section 34. This interpretation aligns with the decisions in Mohan Goldwater and Radico Khaitan, where the courts affirmed that the filing date governs the entitlement to registration.
The Court rejected the appellant’s reliance on Neon Laboratories. While Neon dealt with a passing-off action, the present dispute concerned registration and the statutory priority under Section 18. The Court noted that Neon was expressly limited to passing-off and could not be extended to a registration-centric context. Moreover, the Court found that the appellant’s earlier reply to the examination report (dated 24.06.2008) had approbated the distinctiveness of its mark and reprobated any claim of similarity, creating an estoppel against later contradictory assertions.
"The appellant having already taken a stand as stated above in its response to the examination report dated 24.06.2008, it cannot now be allowed to claim rights on the same mark ‘20-20’ and challenge the registration granted to the respondent No. 2, on the ground that the marks are deceptively similar."
The Court further observed that the Registrar’s order was based on a mechanical application of the filing-date rule and did not err in rejecting the opposition. The appellant’s evidence of use from 2007-2008 was inconsequential because the statutory scheme does not give retroactive effect to post-filing use when the application was made on a “proposed to be used” basis.
Finally, the Court dismissed the appeal, affirmed the Registrar’s order, and declined to interfere with the registration of respondent No. 2.
The Verdict
The appeal was dismissed. The Division Bench upheld the Single Judge’s order dated 10.03.2026, thereby confirming the Registrar’s decision of 29.04.2025 that granted registration of the mark “20-20” to respondent No. 2. No costs were awarded, and the appellant’s request for an injunction or cancellation of the registration was rejected.
What This Means For Similar Cases
Prior Filing Trumps Prior Use
- When both parties file on a “proposed to be used” basis, the earlier filing date under Section 18 determines priority, irrespective of subsequent market use.
- Practitioners must secure filing promptly; reliance on later commercial use is insufficient to overturn an earlier application.
Section 34 Is Not Absolute
- Protection under Section 34 is subject to Sections 11, 18 and 9. A prior user cannot defeat a registrant who filed earlier unless the user can prove use before the filing date.
- Courts will closely scrutinise any contradictory statements made during the examination process; approbation and reprobation can create estoppel.
Avoid Approbation-Reprobation
- Parties must maintain consistent positions throughout the registration process. Changing the stance after obtaining registration can lead to dismissal of injunction or cancellation claims.
- Documented, contemporaneous evidence of use is essential, but it must be pre-filing to affect priority.
Actionable Takeaways
- File trademark applications as early as possible; document the filing date.
- If you rely on prior-use defence, ensure use predates the opponent’s filing date.
- Keep examination-report replies consistent; avoid statements that could be used to estop you later.
- In opposition proceedings, emphasize statutory priority under Section 18 rather than solely relying on common-law passing-off principles.
