Prior Use Or Intermittent Use, Delhi High Court Decides

Trademark is the most important asset of a business, irrespective of the kind of goods and services they offer. From high end luxury fashion brands to your local eatery – everyone wants to create a distinct identity in the minds of their target audience. Hence, it is not surprising to see mattress manufacturers fighting over the use of the term ‘NO TURN’, which in essence, is a feature of a mattress which need not be flipped time and again in order to increase its longevity. Caught in the situation were two biggest mattress producers – Peps and Kurlon.

Indian mattress giants, Peps and Kurlon entered into a dispute over the use of the mark ‘NO TURN’. The case was filed by Peps Industries Pvt Ltd (the Plaintiff) against Kurlon Ltd (the Defendant). Here, a question of prior use arose before the Delhi High Court to determine the rightful trade mark owner of the impugned mark.

The Plaintiff was granted trademark registration for ‘NO TURN’ on 4th February, 2011 with effect from 2nd January, 2008. The mark was being used by the Plaintiff with respect to mattresses and beddings, and the Plaintiff had been using the mark for 11 years. In August, 2018, the plaintiff learned that the defendant had adopted the trademark ‘NO TURN’ for similar products.

The present case was filed to permanently restrict the Defendant from using the mark.

The Defendant claimed to be the prior user of the mark ‘NO TURN’ and filed an application to register it as a trade mark but the Examiner raised objections. The Plaintiff claimed that the Defendant’s actions are an afterthought. The Plaintiff further countered that the Defendant was not a continuous user of the mark. It was also contended that a likelihood of confusion might arise amongst consumers due to this.

The Defendant pleaded for removal of the temporary injunction order while the Plaintiff pleaded for a permanent injunction to be granted against the use of the mark.

The Court identified the two major issues that needed to be resolved,

  1. Whether the Defendant is a prior user of the mark ‘NO TURN’ and if yes, whether the Defendant is entitled to protection?
  2. Whether on the facts of the case the Defendant is using the mark as a descriptive mark, and thus, entitled to protection and hence no injunction can be granted in favour of the plaintiff?

While deciding the case, the Court deduced the following principles with regard to the rights of the registered trademark owner:

  1. The rights of a registered owner of the trademark though exclusive are subject to various provisions and thus not absolute.
  2. The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.
  3. The right of the registered owner of the trademark is not higher in order to right of the person using an identical trademark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trademark prior to the use of the trademark by the registered owner. The use by other party has to be continuous, distinct from the use which is separate, isolated or disjointed and requires the commercially continuous use of mark in relation to the same goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute use of the mark.

Therefore, the Court observed that the Trade Marks Act sets out that the action for passing off which is premised on the rights of the prior user generating a goodwill, shall be unaffected by any registration provided under the Act.

While accepting the contention raised by the Defendant, the Court noted that from the manner in which ‘No Turn’ is used on the mattresses and from the brochure of the Defendant it is evident that the mark ‘No Turn’ is not used as a trademark/brand but to describe the quality of the mattress and thus the mattresses which do not require to be ‘turned around’ are labelled ‘No Turn’.

Finally, the Court stated that even though the Defendant had been using the mark for a long time, the usage was intermittent and not voluminous. The Court refused to provide injunction to the Plaintiff as the mark ‘NO TURN’ is a descriptive mark. “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.”

Hence, no injunction was granted in favour of the Plaintiff.

Prior use or intermittent use, Delhi High Court decides by Manisha Singh and Simran Bhullar

Article was 1st published on Mondaq