Trademarks in India are highly significant assets for businesses. These embody not only a certain brand but also the confidence and excellence that are linked to it. The Trade Marks Act 1999 (the “Act”) is crucial in protecting trademarks in India. Section 34 of the Act assumes a key role as it pertains to a pivotal facet of trademark safeguarding, the vested rights of trademark prior use.

This article interprets Section 34 of the Act coupled with judicial precedent. This study will examine legal cases focusing on the significance of ongoing usage. It will present illustrative instances to clarify the definition of ‘use of trademarks’ in the context of India.

Throughout this article, our aim is to emphasize the significance of a trademark’s prior use and its enduring influence on the rights associated with trademarks.

Understanding Section 34 of the Act

Prior to delving into the intricacies of prior use, it is imperative first to comprehend the fundamental principles outlined in Section 34 of the Act.

This provision guarantees that the owner of a legally registered trademark or a registered user is prohibited from impeding the usage of any identical or similar mark by an individual who has been utilizing the mark before the aforementioned owner or user.

Section 34 of the Act provides protection for the rights and interests of individuals or entities who had already been utilizing a specific trademark before its registration by a different party.

This section provides for protecting the vested rights so that the proprietor of a registered trademark or a registered user cannot interfere with the use of any identical or similar trademark if the person has been using the trademark from an earlier date.

Case Laws Illustrating Section 34

To fully comprehend the importance of Section 34 of the Act, it is imperative to analyze practical instances of legal cases in which this provision has been implemented. Let us examine several significant legal cases:

1. S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683:

The case of S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683 is a significant legal decision that the Supreme Court of India rendered.

This particular legal case establishes a precedent by emphasizing the significance of prior use rights. This highlights that registering a trademark does not confer an unconditional monopoly, particularly if another party has been utilizing it prior to registration.

The Supreme Court herein observed that “the scheme of the Act is such where rights of prior user are recognized superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of the prior user.”

2. Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016) 2 SCC 672:

The case of Neon Laboratories Ltd. v. Medical Technologies Ltd. strengthens the existing safeguards provided under Section 34 of the Act. This illustrates the legal acknowledgment of the significance of earlier usage within the realm of trademarks.

It is pertinent to note that the Supreme Court in this case observed that “a proprietor of a trademark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This ‘first user’ is a seminal part of the Act.”

3. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (AIR 2018 SC 167):

The case of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors is a significant legal matter that was brought before the Supreme Court which observed the territorial prior use.

This particular case delves into the aspect wherein Toyota was unable to prove the prior use of its trademark ‘Prius’ in India. The Supreme Court herein held that Toyota’s Prius trademark had not acquired a degree of goodwill, reputation, and market or popularity in the Indian market so as to vest in Toyota necessary attributes of rights of a prior user so as to successfully maintain an action of passing off even against the registered owner.

Continuous Use: A Key Element

The significance of consistent utilization emerges as a repeating motif among these legal precedents. According to legal regulations, it is mandatory for trademark usage to adhere to a constant and continuous pattern without any occasional breaks.

This provision prevents the submission of baseless prior use claims and verifies that the trademark in question represents a legitimate and active business or product.

The case of Peps Industries Private Limited v. Kurlon Limited (295 (2022) DLT 527) underscored the need to maintain continuous usage rather than sporadic usage. Following the Delhi High Court ruling, Kurlon Limited [Kurlon Limited vs. Peps Industries Private Limited, Petitions for Special Leave to Appeal (C) No. 20912/2022] pursued legal recourse by filing a Special Leave Petition with the Supreme Court.

However, the Supreme Court ultimately rejected the petition. This particular scenario serves as a notable illustration of how sporadic usage can undermine the strength of prior use assertions.

‘Use of the Trademarks’ in India

What precisely encompasses the ‘use of the trademarks’ within the jurisdiction of India? A comprehensive comprehension of this notion holds significant importance for businesses that aim to establish prior usage rights.

In the context of India, the use of a trademark entails the process of officially registering it and thereafter utilizing it in conjunction with goods or services. According to legal regulations, the use of a trademark must be conducted in a bona fide manner, signifying a sincere intention to employ it as a distinctive symbol of a business.

The use of a trademark encompasses a range of modalities, such as affixing it onto merchandise, packaging, promotional materials, or during commercial transactions. Consistency in usage and a sincere endeavor to differentiate goods or services in the market are crucial factors to consider.

Illustrative Examples to Prove ‘Use of the Trademark’

To elucidate the concept of ‘use of the trademark,’ let us examine several illustrative instances:

  1. Product Labeling: A prominent indication of utilizing a trademark in commercial transactions is by affixing it onto product labels. Moreover, you can also consider packaging that is then put up for sale in the market.
  2. Advertising: Advertising is the strategic placement of ads in various media channels to showcase a brand.
  3. Trade Shows: Businesses use trade shows to showcase products, attract clients and forge partnerships.
  4. Website Usage: Employing the registered trademark on a corporate website to advertise and market products or services offered for sale.


In summary, Section 34 of Act’s significance lies in safeguarding the interests of enterprises and individuals. Especially those who have utilized a trademark before its registration by another party.

Establishing prior use rights necessitates the continuous utilization of trademarks and not intermittently. This makes it imperative to comprehend the parameters that define the concept of ‘use of the trademarks’ within India.

Legal jurisprudence has recognized and illustrated empirical instances of prior use recognition and preservation. Implementing this safeguard guarantees equity within the commercial sphere. It also nurtures the development of novel ideas, rivalry, and the emergence of fresh enterprises.

The significance of past usage remains unaltered in the continuously changing domain of trademarks. It is imperative for businesses to possess knowledge of their preexisting usage entitlements and effectively utilize them for brand protection. Hence guaranteeing the sustained prosperity of their trademarks.

Nitin Abhishek

Trademark Attorney

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