intellectual property law

IPR Newsletter: Doctrine of Prior Use – April 2023

What Is Doctrine Of Prior Use?

The doctrine of prior use is a perplexing idea. There are various trademark laws that govern the registration and use of trademarks in various nations. Trademarks are a component of intellectual property rights, and in modern times, governments and individuals around the world are promoting the safe use of intellectual property rights so that original creators are not harmed by content theft. A trademark is a sign designed to distinguish the products or services of one business from those of other businesses. Protected innovation rights safeguard trademarks.

The protection of trademarks is an essential issue that may arise under intellectual property rights in the current era. Regarding trademarks, the concept of “prior use prevails” is prevalent in most nations today. Who should be allowed to use the trademark, the party that registered it first or the party that used it first, has been the subject of several court cases. This article will examine the Indian Trademarks Act and Section 34, as well as the associated case law.

Provision Under Indian Trademark Law

Section 34 of Indian Trademark Law

Saving for vested rights

Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior: 

  1. to the use of the first-mentioned trademark in relation to those goods or services be the proprietor or a predecessor in title of his; or
  2. to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

Section 34 of the Indian Trademark Act protects the rights of trademark owners who have not registered their trademark but have been using it for a period before anyone else. No provision of the Act shall permit a registered trademark owner to infringe upon the rights of a person who has been using an identical trademark prior to the date of first use of the later trademark or registration of the new trademark. This provision provides that the owner of a trademark does not have the right to prevent the use of a similar or identical mark by a third party if that third party’s usage predates the owner’s use or registration date. This is commonly referred to as the “First user” rule, an original provision of the Trademark Act.

The question nonetheless arises regarding the legal standing of a party that has utilized an unregistered trademark prior to the date of use for the registration of an identical trademark by another party. Should the entity that applied for and was granted registration of the relevant trademark be the only owner of that mark? Should such a trademark owner have the option to prevent the earlier user from continuing to use the mark? Should earlier users of the imprint be in a position to object to and/or decline the registration of the significant imprint by another? These are not scholarly inquiries. Both users of unregistered trademarks and owners of certain trademark registrations face a real risk of having their rights to use their individual trademarks restricted or even revoked.

“Use” has a really significant bearing. The definition of ‘use’ under section 34 of the statute requires continuous usage and is neither discontinuous nor inconsistent. Who utilized the imprint or name initially is a commonly contested matter of fact.

The protection available to an earlier user under section 34 of the statute, when allowed, has the effect of diminishing the guarantee granted to a registered mark. Hence, the foundation of prerequisites under section 34 requires relevant evidence of prior use. There must be a strong display of the imprint being used in relation to the goods and businesses for which the registered mark is also being used. For instance, the Revelation of marketing predictions is an appropriate resource for constructing a consistent course of imprint usage preceding the date the enrolled user began using the imprint.


The country’s current Trademark Law complies with the TRIPs agreement and is designed to safeguard the rights of trademark and brand name owners. The doctrine of prior use is defined in Section 34 of the Indian Trademark Act. In the article, the applicability of the theory in Indian practice and how Indian courts have interpreted the law as they have encountered it are examined. The first user regulation is an initial provision of the Act, and it has always been regarded as pre-great. The owner of an earlier user will secure a semi-restrictive right to the selective use of the imprint if he uses and promotes a stamp or get-up that is like his products and makes it appear to be associated with those products. This privilege can be infringed upon by any individual who, by utilizing the equivalent or some misleadingly comparative imprint and enticing users to purchase from his merchandise, is not of the owner.

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