Have you ever wondered that what was the importance of your trademark’s user date? User date is no less to others for protecting a trademark. In this article I have dealt with the meaning and importance of user date in trademark along with some decided cases.
User date is nothing but the date from which the trademark is being used irrespective its registration. In a country like India, the ‘prior user’ has more importance than the ‘registered’ mark. To claim such priority, user date is mandatory and shall be proved.
When user date is concerned, the very first question which comes to our mind is what amounts to use of trademark? In a catena of cases, the courts have interpreted the term ‘usage’ not only with the volume of sales, but also with advertisements of such marks and the consumer awareness of the same.
In Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd. & Ors the court held that, “…Bona fide test of marketing, promotional gifts and experimental sales in small volume may be sufficient to establish a continuous prior use of the mark.”
Prior use gives an Exclusive right to the trademark
As I have said earlier, the prior user has an exclusive right over the mark compared to the registered user. Such right can be claimed by submission of user date as a proof of such prior use. The law makes it clear that the prior user can enjoy priority in registration as well as prevent any third person from infringing or registering the same/similar mark.
Section 33 of The Trade Marks Act expressly restricts the registered proprietor in interfering the prior user’s rights.
The famous judgment in the case N.R.Dongre and Ors vs. Whirlpool Corporation and Anr. makes it clear that there is no statutory bar to a prior user of a trade mark for bringing an action against the registered user and it is no defense that the defendant’s trade mark is registered and the prior user’s is not so registered.
Prior use and Passing off
Passing off is the sole right which protects the unregistered marks, even against the registered marks. Section 27(2) of TheTrade Marks Act says that a prior user of a trade mark can take an action for passing off against any subsequent user of a similar trade mark including a registered user.
In Century Traders vs. Roshan Lal Duggar & Co. the court held that “registration of a mark is irrelevant in an action of passing off and in order to succeed the proceedings one has to prove the prior use”.
However, the burden of proof lies on the plaintiff. He has to prove prior use of his mark. The satisfaction of this proof alone limits the use of same or similar trademark.
Prior use and Distinctiveness
The trademarks to be registered should not be descriptive. An Exception to this rule is the acquisition of secondary meaning. It is technically using the mark continuously for a longer period which eventually gains popularity and reputation.
In Godfrey Philips India Limited v. Girnar Food & Beverages (P) Limited and Info Edge (India) Private Limited and another v. Shailesh Gupta & Anr., the court observed that “a descriptive trademark is entitled to protection if it has assumed a secondary meaning by a long use in the market”.
In such way, long use and the mark share an interesting relationship in making a mark distinctive.
Priority and user date
It is none other than the first user of the mark who gets priority in trademark proceedings. In case of any objections raised in the registration of a mark, first use of the mark shall be an effective ground. The first user of a mark is absolutely entitled to be protected under law. Unless the user date is mentioned, it becomes difficult to claim the ‘first use’.
In Consolidated Foods Corporation v. Brandon and Co., Private Ltd. it was observed that “priority in adoption and use of a trade mark is superior to priority in registration”.
It is the trademark which is considered as an asset of a brand and no one gives up on their trademark. What is the quintessential necessity to protect such right? I would say it as prior use of the mark. The doctrine of prior use is given the primary consideration in any trademark proceedings, and there is no way to prove the same without the user date. Despite everything, your user date is the moment your trademark is born, so celebrate it.