Defense of prior use cannot be accepted when the use of the mark is intermittent and not voluminous

Kosha Doshi | Symbiosis Law School, Pune | 23rd March 2020

Pep Industries vs Kurlon [CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019; Supreme Court]

Facts:

            The suit instituted was for seeking permanent injunction by the plaintiff against the defendant in relation with the plaintiff’s use of trade mark “NO TURN”. The plaintiff had applied for the registration of the trade mark “NO TURN” in January, 2009 which was granted in February, 2011. The use had effect from January 2008 for a class 20 of mattresses, beds, coir mats, cushions, sofas, seats, mattress springs and similar items. 

            In August 2018, the plaintiff got information of defendant’s use of the trade mark “NO TURN”. Thereby sending him a legal notice wherein the defendant filed for the trade mark usage and rectification of application of the plaintiff. The ground for the same was Section 34 of the Trade Mark Act, 1999 stating prior use of the trademarks. 

            The plaintiff approached the High Court and the court issued an ex-parte interim order of injunction against the defendant. The defendant argued that he had been using the trade mark since 2007, prior to the plaintiff’s filing of the trademark application. Further stating that his trademark has been associated with the brand Kurlon which is a well reputed and established company therefore no confusion should exist. The plaintiff’s side argued that the defendant had not used the trademark continuously and it only represented a characteristic of the mattress that it would not require to be turned even after long usage. 

Issue:

            Determine whose right is better and superior as registration is mere recognition of pre existing right of common law. Whether the mark is merely descriptive?

Judgment:

            The case was heard by Justice Mukta Gupta who stated that no injunction could be provided wherein the registered Trade Mark is merely descriptive mark and has no distinctiveness. Reference was made by the Supreme Court in regard with prior cases involving prior use of trademarks under Section 34 of the Act. The court made the following observations:

• The Rights of a Registered Owner is not exclusive, it is subject to other provisions of the Act thereby the right is not absolute.
• The rights of a person alleging passing off to another, this is a concept based in common law and thereby the following rights are independent from those of the Trademark Act, 1999.
• The right of a registered owner is not higher or superior that the right of an identical trademark user under section 34 of the Act, involving prior use of the same. 
• The user of the other party needs to be continuous distinct from user which is separate, isolated and disjointed. 
• The defendant needs to prove volume of sales as mere issuance of advertisement would not constitute a trademark. 

            Since the use of defendant’s trademark was from 2007 but lacked continuous and voluminous use of the same, the suit failed against the same. The defendant’s trademark acted only as a label with a descriptive quality. Despite this, the plaintiff was not entitled to relief of injunction since there was no sufficient evidence to prove from the date of registration or application that the defendant’s trademark was only for a descriptive purpose. Finally, the court held that the defense of prior use cannot be accepted when the use of the mark is intermittent and not voluminous.