Defence of prior use under Trade Marks Act cannot be accepted when the use is intermittent and not voluminous: Delhi HC

The Delhi High Court has held that defence of prior use cannot be accepted when the use of the mark is intermittent and not voluminous. (Pep Industries vs Kurlon).It has also held that there could be no injunction in case when a registered trademark is merely a descriptive mark having no distinctiveness..The order was passed by a Single Judge Bench of Justice Mukta Gupta in a suit for permanent injunction by Peps Industries (Plaintiff) against Kurlon Ltd (Defendant) in connection with the former’s registered mark, ‘NO TURN’..The Plaintiff had applied for the registration of the mark ‘NO TURN’ in January 2008 and it was granted in February, 2011 with effect from January, 2008 under under Class-20 for mattresses, wall beds, adjustable beds, coir mats, spring mattresses, sofas, pillows, cushions, seats and other related products..In August, 2018, the Plaintiff came to know that the Defendant had dishonestly adopted the trademark ‘NO TURN’..Upon receiving a legal notice, the Defendant also filed an application for the mark 'NO TURN' as also the rectification application seeking cancellation of the Plaintiff‟s mark 'NO TURN' on the ground of prior user under Section 34 of the Trade Marks Act, 1999..The Plaintiff subsequently moved the High Court and an ex-parte interim order of injunction was passed against the Defendant..Seeking the vacation of the temporary injunction, the Defendant argued that it had been using the trademark since the year 2007, prior to the filing date of Plaintiff’s application for registration. It was added that the Defendant used the ‘NO TURN’ mark along with its brand KURLON which was a well-established and reputed brand in mattresses and hence there can be no confusion..The Plaintiff contended that the Defendant was not using the mark ‘NO TURN’ continuously and the term was used to represent the particular characteristic of its mattresses which did not require to be ‘turned over’ after a long period of use..The Court perused a series of judgements passed by the Supreme Court on the rights of the registered trademark vis a vis a prior user under Section 34 of the Trade Marks Act and deduced them as under:- Rights of registered owner of the trademark though exclusive, are subject to various provisions and thus not absolute.- 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.- The right of the registered owner of the trademark is not higher in order to right of the person using an identical trademark if the other party has been continuously using the said trademark prior to the user of the trademark by the registered owner. - The user by other party has to be continuous, distinct from the user 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 has also to prove the volume of sales. Mere issuance of an advertisement would not constitute user of the mark..The Court observed that the collective reading of the Trade Marks Act indicated 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.It added that the registration was a mere recognition of the rights pre-existing in common law and in case of conflict between two registered proprietors, the evaluation of the better rights in common law was essential as the same would determine whose rights between the two registered proprietors are better and superior..In view of above, the Court analysed the Plaintiff's mark along side the Defendant's as well as supporting documents. .The Court stated that from the invoices as placed on record by the Defendant, it was evident that though it was using 'NO TURN' from the year 2007, the sales were intermittent in the various years and did not indicate a continuous and voluminous use of the mark. .The Court then analysed whether the mark was merely a descriptive mark. .As far as the use by the Defendant was concerned, the Court stated that the manner in which 'No Turn' was used on the mattresses by Defendant, it was evident that the mark was not used as a trademark brand but as a descriptive mark to describe the quality of the mattress. The prior user of the defendant of the year 2007 is only of the label and not the trademark of mattress, the Court said. .The Court concluded that the Defendant failed to establish the defence under Section 34 of the Trade Marks Act, 1999. .The Court nonetheless held that Plaintiff would still not be entitled to the relief of injunction for the reason the mark 'NO TURN' was descriptive mark and no material was placed on record to show that on the date of application or even on the date of registration, the mark had acquired the distinctiveness to achieve the status of a well known mark..The interim injuction was accordingly vacated..The Plaintiff was represented by Advocates Jayant Mehta with Advocates Suveni Bhagat, Drishti Harpalani..Advocate Kumar Sudeep represented Kurlon..Read the Order: