'Priority Of Use' No Defence Against Trademark Infringement Unless It Predates Both Use & Registration By Plaintiff: Delhi High Court

The Delhi High Court has made it clear that priority of user is not a defence to an action for infringement of trademark unless the use of such mark by the defendant predates both the user as well as the registration of the asserted mark of the plaintiff.A division bench of Justices C. Hari Shankar and Om Prakash Shukla observed,“it is only if the defendant has been using the allegedly infringing mark, from a point of time prior to the registration as well as the user of the asserted mark of the plaintiff, that the defendant, despite being an infringer can escape an injunction by seeking recourse to Section 34. Else, mere priority of user by the defendant is no defence to infringement, or the injunction which must inexorably follow a finding of infringement.”Section 34 of the Trademarks Act 1999 is a saving clause which stipulates that nothing shall entitle the user of a registered trademark to interfere with use of identical or similar mark by another person who has— continuously used that trademark from a date prior (a) to the use by the proprietor or (b) to the date of registration, whichever is the earlier.In the case at hand, the Respondent had registered MAYO mark under Class 16 back in 1992. It had sued the Appellant for using MAYO Clinic. As the trial court had restrained the Appellant, it preferred the present appeal.Appellant claimed there was no infringement of the 1992 registrations as it was not using the mark MAYO for any goods or services under Class 16. In so far as the 2008 registration of the mark MAYO CLINIC in favour of the respondent in Class 41 was concerned, the appellant submitted that it had been using the mark MAYO since 1995, i.e. for over 13 years by the time of the said registration.The High Court however was of the view that the respondent not having used the MAYO and MAYO CLINIC marks, despite registration in 1992, cannot make any substantial difference.“The use of the words “whichever is earlier” in Section 34 results in the Section being applicable only where the defendant has been using the infringing mark from a point of time prior to the date of registration as well as user of the plaintiff's mark. The user, by the defendant, of the infringing mark has, therefore, to pre-date both the registration and user of the asserted mark of the plaintiff,” it held.In the present case, the Court noted that the registration of the marks MAYO and MAYO CLINIC in favour of the respondent was of 1992 whereas, admittedly, the user of the MAYO mark by the appellants is only of 1995.As such, it dismissed the appeal.Appearance: Mr. Jayant K Sud, Sr. Adv. Mr. Vishal Dabas, Ms. Shayal Anand, Mr. Sai Manik Sud, Mr. Sahib Kochhar, Mr. Aishwarya Sharma, Advs. for Appellant; Mr. Raunaq Kamath, Mr. Yash Raj, Ms. Yashi Bajpai and Ms. Aishwarya Kane, Advs. for RespondentCase title: Bodhisattva Charitable Trust And Ors. v. Mayo Foundation For Medical Education And ResearchCitation: 2025 LiveLaw (Del) 948Case no.: FAO(OS) (COMM) 73/2024Click here to read order

'Priority Of Use' No Defence Against Trademark Infringement Unless It Predates Both Use & Registration By Plaintiff: Delhi High Court

Kapil Dhyani

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