Defense of Prior Use Not Permitted When Mark Usage Was Sporadic and Not Voluminous: Delhi HC. - Synopsis
Abhishek Rathee 23 Mar 2020

The High Court of Delhi, In the matter of PEPS Industries pvt. Ltd. V. Kurlon limited held that, where the use of the label was sporadic and not voluminous, the protection of prior usage under the Trade Marks Act could not be sustained.

Although dismissing the petition for permanent injunction, the Single Bench of Justice Mukta Gupta noted that where the trade mark is not descriptive or has no distinctive character, the injunction argument does not stand.

In the present case, the Plaintiff demanded a permanent injunction against the Respondent to supply certain products or services under the trade mark' NO TURN' which the Plaintiff claimed to be the registered owner of.

The Plaintiff claimed that, in addition to being the registered owner of the trademark' NO TURN,' the Plaintiff had acknowledged and continued to use the same since 15 January 2008 as is evident from the trademark registration document, orders and invoices for' NO TURN ' labels for a continuous duration of about 11 years.

When opposing the point of' prior use' posed by the Defendant, the Plaintiff argued that the Defendant's commodity is still not regularly used commercially and that there is no evidence of the fact that the Defendant affixes ' NO TURN ' labels to its goods and that no prior use is made on the basis of the records provided by the Defendant along with the written statement.

In addition to claiming' prior usage,' the Defender also argued that it uses the' NO Change ' label along with its KURLON brand, which is a well-established and reputable brand in mattresses and thus there can be no misunderstanding.

This was submitted in response to the Plaintiff's claim that, because the Plaintiff and the Defendant use' NO TURN' for similar products, i.e. mattresses, there is a strong possibility of misunderstanding between the consumers.

Accordingly, the court observed that the common reading of the Trade Marks Act suggests that the transfer activity, which is focused on the rights of the prior consumer creating goodwill, is not affected by any registration provided for in the Act.

It was also noted that a trade mark exists independently of a registration which merely provides more protection under the Statute, leaving the rights of the common law fully unchanged.

Although acknowledging the claim posed by the Defendant, the Court acknowledged that the manner in which' No Turn' is used on the mattresses and in the Defendant's brochure, it is clear that the' No Turn ' mark is not used as a signature, but to define the consistency of the mattress and that the mattresses which do not require' turning around' are labeled' No Turn.'

While the court agreed that the Defendant was not entitled to the protection of previous use under section 34 of the Trade Mark Act as its use was sporadic and not voluminous, it also declined to grant an injunction to the Plaintiff as the trade mark ' NO Change' is a descriptive trade mark. It illustrated the following:

“However, the plaintiff would still not be entitled to the relief of injunction for the reason the mark "NO TURN" is a descriptive mark. The plaintiff has placed no material on record to show that on the date of application or even on the date of registration plaintiff‟s trademark „NO TURN‟ had acquired the distinctiveness to achieve the status of a well known mark.”

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