Parle Products Pvt. Ltd. v. The Registrar of Trade Marks & Anr.

High Court of Delhi at New Delhi | Decided: 28 July 2026 LPA 316/2026 & CM APPL. 27819-20/2026 Bench: Hon’ble Mr. Justice V. Kameswar Rao & Hon’ble Ms. Justice Manmeet Pritam Singh Arora

Background

In Parle Products Pvt. Ltd. v. The Registrar of Trade Marks,The appellant, Parle Products Pvt. Ltd., is a well-known company engaged in manufacturing and marketing biscuits, cookies, confectionery, snack foods, bakery products, chips, wafers, potato flakes, namkeen, cereal preparations, atta (flour), toffees, candies, chocolates, cakes, pastries and other sweet and savoury products. The appellant claimed to be the registered proprietor and original, honest adopter of the trade marks ’20-20′, ‘TWENTY-20’ and ‘T20’. Its three trade mark applications bearing numbers 1608181 (T20), 1608182 (TWENTY-20) and 1608183 (20-20), all in Class 30, were filed on October 4, 2007 and were subsequently registered. The appellant stated that it had conducted a thorough preliminary search before adopting the mark and had not found any conflicting mark in the records of the Trade Mark Registry at that time. The appellant further claimed continuous and honest use of the mark ’20-20′ in Class 30 goods since 2007–2008, substantiated by invoices from 2009 and asserted that the mark had acquired secondary meaning and well-known trademark status.

Respondent No. 2, a competing entity, had filed an application bearing No. 1606126 dated September 27, 2007 one week before the appellant’s filing date of October 4, 2007 for registration of the identical mark ’20-20′ in Class 30 in respect of goods including coffee, tea, cocoa, sugar, rice, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, candies, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices, ice, vermicelli and papad. Respondent No. 2’s application was filed on a “proposed to be used” basis.

Respondent No. 2’s application, after examination, had been refused under Section 9(1)(b) of the Act. However, upon challenge before the Intellectual Property Appellate Board (IPAB), the refusal was set aside by an order dated August 9, 2019, directing that the application be proceeded for publication in the Trade Marks Journal. The application was accordingly published in Trade Marks Journal No. 1960 on August 10, 2020. The appellant filed a notice of opposition on November 25, 2020. Respondent No. 2 filed its counter statement on February 1, 2021. The appellant filed its evidence in support of opposition on November 16, 2022 and Respondent No. 2 filed its evidence on January 9, 2023. After a final hearing on April 17, 2025, the Registrar of Trade Marks passed the impugned order dated April 29, 2025, dismissing the appellant’s opposition and allowing Respondent No. 2’s application to proceed for registration. On the same day, without waiting for expiry of the appeal period under Section 91 of the Act, the Registrar issued Registration Certificate No. 3855723 to Respondent No. 2.

A further complication arose from the appellant’s own registration. When the appellant had received an examination report dated June 24, 2008 in respect of its own application No. 1608181, Respondent No. 2’s pending application had been cited as a conflicting mark under Sections 9 and 11. In its reply dated August 1, 2008, the appellant had stated that the competing marks were visually, phonetically and conceptually different from one another and had expressed willingness to restrict its goods specification to “biscuits only” to overcome the Section 11 objection. However, when the appellant’s mark was advertised in the Trade Marks Journal dated June 12, 2017, the registration erroneously covered the entire range of goods originally applied for and not merely biscuits. This erroneous registration was granted on November 1, 2017 relating back to the date of application, October 4, 2007. The appellant had raised no objection to this expanded publication at that stage.

The appellant challenged the Registrar’s order dated April 29, 2025 before the learned Single Judge in C.A.(COMM.IPD-TM) No. 49/2025, seeking rectification/cancellation of Respondent No. 2’s registration. The learned Single Judge dismissed this appeal by order dated March 10, 2026. The present Letters Patent Appeal (LPA 316/2026) challenged the order of the learned Single Judge before the Division Bench.

Issues for Determination

1. Whether the learned Single Judge was justified in dismissing the appeal filed by the appellant under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s order dated April 29, 2025, which dismissed the appellant’s opposition and allowed Respondent No. 2’s application for registration of the trade mark ’20-20′ in Class 30.
2. Whether priority in trade mark law, as between two applicants who both filed applications for registration of an identical mark on a “proposed to be used” basis within seven days of each other, is determined by the date of the application for registration under Section 18 of the Trade Marks Act, 1999 or by the date of first commercial use of the mark in the market.
3. Whether the “first in the market” test the principle that priority of use prevails over priority of registration as articulated by the Supreme Court in Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, applies to a registration/opposition proceeding under Section 18 of the Act or whether it is confined to passing off actions.
4. Whether the appellant’s commercial use of the mark ’20-20′ in the period between the filing of the competing applications and the final grant of registration in favour of Respondent No. 2 conferred any superior right upon the appellant that could defeat Respondent No. 2’s registration specifically, whether such use in the interregnum could override the rights of the prior applicant/senior adopter under Section 18 of the Act.
5. Whether Section 18 of the Act must be read harmoniously with Sections 11 and 34 of the Act so as to protect the prior user’s rights against a prior applicant who had not yet commenced use of the mark and whether Section 11(3)(a) which bars registration of a mark liable to be restrained in a passing off action was attracted on the facts of this case.
6. Whether the appellant was precluded from challenging the registration of Respondent No. 2’s mark ’20-20′ on the ground that it was identical or deceptively similar to the appellant’s mark, having previously represented to the Trade Marks Registry in its reply dated August 1, 2008 to the examination report that the competing marks were visually, phonetically and conceptually different from one another a principle of approbation and reprobation.
7. Whether the delay in registration in favour of Respondent No. 2, attributable to the administrative delays of the Trade Marks Registry and the prolonged opposition proceedings spanning 17 years, could be held against Respondent No. 2 so as to disentitle it from the benefit of its earlier application date.

Key Holdings of the Court

• First, the Division Bench held that the learned Single Judge was correct in dismissing the appellant’s appeal and affirmed that the order of the Registrar dated April 29, 2025 was not legally infirm. The Division Bench found no reason to interfere with the impugned judgment of the learned Single Judge.
• Second, the court held that as between two applicants who both filed applications for registration of an identical trade mark on a “proposed to be used” basis, the rights of the parties fall to be determined as on the date of the application for registration under Section 18 of the Act and not by reference to the date of first commercial use. Since Respondent No. 2 had applied on September 27, 2007 and the appellant on October 4, 2007, Respondent No. 2 was the prior adopter and senior applicant and its application entitled it to registration.
• Third, the court affirmed the learned Single Judge’s conclusion that the Supreme Court’s judgment in Neon Laboratories Ltd. v. Medical Technologies Ltd. was decided in the context of a passing off action at the interim injunction stage and that its ratio that the “first in the market” test prevails over prior registration was not authority for a defence under Section 34 of the Act in proceedings concerning registration and opposition. Since Respondent No. 2 had not commenced manufacturing goods under the mark ’20-20′ at any point, the question of passing off did not arise in the present proceedings and the Neon Laboratories ratio was inapplicable.
• Fourth, the court held that the appellant’s commercial use of the mark ’20-20′ in the interregnum period between the filing of the competing applications and the final grant of registration to Respondent No. 2 conferred no special benefit or superior right upon the appellant. Such use in the interregnum did not entitle the appellant to oust the prior applicant from valid registration under Section 18. To hold otherwise would allow unscrupulous applicants to exploit the time-lag between application and registration to defeat the rights of a senior adopter, which would be contrary to the object and purpose of Section 18 and would discourage the registration of trade marks.
• Fifth, the court held that the delay of 17 years in Respondent No. 2 obtaining registration was not attributable to any laches or dormancy on Respondent No. 2’s part, but was caused by the delays of the Trade Marks Registry in processing the application and by the pursuit of opposition proceedings. Respondent No. 2 had diligently pursued its application throughout this period filing an rte application, appearing before the Registry, filing a writ petition before the High Court, challenging the refusal order before the IPAB and participating in the opposition proceedings. There was no reason for Respondent No. 2 to commence use of the mark in the face of the appellant’s opposition and this delay could not be held against it.
• Sixth, the court held that the registration granted to Respondent No. 2 on April 29, 2025 related back to the date of application, September 27, 2007, under the principle of retrospective registration. This date was prior to the appellant’s date of adoption and use of the mark (2007–2008). Accordingly, even applying the protection under Section 34 which protects a prior user only where the user predates both the date of first use and the date of registration of the registered proprietor, whichever is earlier the appellant could not defeat Respondent No. 2’s rights, since the registration date of September 27, 2007 antedated the appellant’s adoption and use.
• Seventh, the court held that the appellant was disentitled from challenging Respondent No. 2’s mark ’20-20′ on the ground of deceptive similarity by reason of the principle of approbation and reprobation. The appellant had previously represented to the Trade Marks Registry in its reply dated August 1, 2008 to the examination report that the competing marks were visually, phonetically and conceptually different from one another and had on that basis obtained registration of its own mark. It was impermissible in law for the appellant to now take the contradictory position that the same mark ’20-20′ of Respondent No. 2 was deceptively similar and liable to be refused registration. This inconsistency in stand was in itself a sufficient and standalone ground to dislodge the appellant’s challenge.
• Eighth, the court rejected the appellant’s reliance on Kerly’s “impasse” doctrine, holding that while Kerly recognises contrasting rights a registrant’s right to injunction on the ground of infringement and a prior user’s right to injunction on the ground of passing off this does not enure to the benefit of the appellant in the present proceedings. The court, drawing on the coordinate bench decision in Thukral Mechanical Works v. PM Diesels Private Ltd. (2026:DHC:966-DB), affirmed that the only statutory protection against infringement injunction available to a party claiming goodwill is under Section 34 of the Act, which requires the user’s use to antedate both the registered proprietor’s use and the date of registration and that the appellant could not satisfy this threshold on the facts.
• Ninth, the appeal was dismissed along with all pending applications.

Statutory Provisions Involved

Section 9 of the Trade Marks Act, 1999 prescribes the absolute grounds for refusal of registration, including where a mark is devoid of distinctive character or descriptive of the goods or their characteristics. Respondent No. 2’s original application had been refused under Section 9(1)(b), which refusal was set aside by the IPAB. The appellant had also received an objection under Section 9 in respect of its own application, which it addressed by arguing the mark was inherently distinctive.

Section 11 of the Trade Marks Act, 1999 sets out the relative grounds for refusal of registration, including where a mark is identical or deceptively similar to an earlier trade mark in relation to identical or similar goods. Section 11(3)(a) specifically prohibits registration of a mark which is liable to be prevented by the law of passing off. The appellant relied on Section 11(3)(a) to argue that Respondent No. 2’s mark could not be registered since its use would be restrained in a passing off action at the instance of the appellant. The court rejected this submission, holding that in the absence of any actual use by Respondent No. 2, no passing off claim could arise.

Section 18 of the Trade Marks Act, 1999 provides that any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply to the Registrar for registration. This provision was the central focus of the judgment, since both parties had filed their applications on a “proposed to be used” basis. The court held that entitlement to registration under Section 18 falls to be determined as on the date of the application, making Respondent No. 2 the senior applicant. The court further affirmed that the provision does not envisage or create two different dates of registration one for those who wait for actual registration and another for those who commence use in the interregnum and that actual use is not a precondition for maintaining an application under this section.

Section 34 of the Trade Marks Act, 1999 saves the rights of a person who has continuously used a trade mark from a date prior both to the first use of the registered mark by the registered proprietor and to the date of registration of the registered mark, whichever is the earlier. This provision was heavily relied upon by the appellant as the statutory basis for its “prior user” defence. The court held that the protection of Section 34 is available only when the challenger’s use is prior to both the registered proprietor’s use and the date of registration and that since Respondent No. 2’s registration related back to September 27, 2007 prior to the appellant’s adoption and use the appellant could not avail of the protection of this section.

Section 47 of the Trade Marks Act, 1999 permits removal of a registered trade mark from the register on the ground of non-use for a continuous period of five years and three months from the date of registration. The appellant raised the argument that Respondent No. 2’s non-use of the mark since its application date warranted removal under this section. The court did not decide this issue on the merits in the present proceedings, as the registration had only been granted in April 2025 and the five-year non-use period had not run.

Section 91 of the Trade Marks Act, 1999 confers a right of appeal to the High Court from orders of the Registrar. The appellant’s challenge to the Registrar’s order dated April 29, 2025 was filed before the learned Single Judge under this provision.

Reasoning of the Court

The Division Bench approached the appeal by identifying a single short issue: whether the learned Single Judge was justified in dismissing the appeal challenging the Registrar’s order dismissing the opposition and allowing Respondent No. 2’s application for registration of the trade mark ’20-20′. The court’s analysis proceeded along several interconnected lines.

On the question of the applicable principle as between two “proposed to be used” applicants, the court examined the long-settled line of authority beginning with the Madras High Court’s decision in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd., which had established that for purposes of registration, the rights of the parties must be determined as on the date of the application and that subsequent use by an opponent during the pendency of a prior application would not entitle the opponent to defeat the prior applicant’s right to registration. The court affirmed that this principle had been consistently followed by the Delhi High Court in a series of later decisions including Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd. & Ors. (2024:DHC:7655), Reckitt and Colman Overseas Health Limited v. Ind Swift Limited and Another (2025:DHC:11867) and Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. (2019:DHC:1423). The court found that the law as laid down in these decisions had not been varied or departed from and that the factual circumstances of the present case were directly analogous to those in Mohan Goldwater.

On the applicability of Neon Laboratories, the court examined paragraphs 7 to 11 of the Supreme Court’s decision in detail. The court agreed with the learned Single Judge’s conclusion, which had been separately affirmed by the coordinate bench in Radico Khaitan, that the ratio of Neon Laboratories was confined to the context of a passing off action at the stage of an interim injunction application and that the Supreme Court had in that case expressly left open the question of whether prior user would have to be anterior to the date of application or prior to the other party’s use. The court noted that Neon Laboratories was a case where the registered proprietor (Neon Laboratories) had a registration that had been granted in 2001 with retrospective effect from October 1992 but had not used the mark till 2004, while the respondent-plaintiff had been using the name “PROFOL” since April 1998. The factual matrix was therefore materially different from the present case, where Respondent No. 2 had never commenced use but had diligently pursued its registration through 17 years of administrative and judicial proceedings.

On the doctrine of approbation and reprobation, the court examined in detail the reply dated August 1, 2008 filed by the appellant to the examination report in respect of its own application, in which it had expressly stated that the marks were visually, phonetically and conceptually different. The court drew on the coordinate bench’s decision in Raman Kwatra & Anr. v. KEI Industries Limited (2023:DHC:83-DB), which had held that a party which had obtained registration on the basis of a representation that its mark was dissimilar to a cited mark could not subsequently obtain equitable relief against the proprietor of the cited mark on the ground of deceptive similarity. The court found that the appellant’s case was squarely covered by this principle and that this inconsistency in stand was an independent and self-standing ground for dismissing the challenge.

On the Kerly’s impasse argument, the court noted the conceptual framework outlined in Thukral Mechanical Works that two separate rights to injunction coexist in such a scenario: a registrant’s right against an infringer on the ground of infringement and a prior user’s right against the registrant on the ground of passing off but held that this framework provided no assistance to the appellant in the present case. The registration of Respondent No. 2, relating back to September 27, 2007, predated the appellant’s adoption and use of the mark in any event, so the appellant could not satisfy the threshold requirement of Section 34, which would have been the only statutory avenue through which it could have blocked Respondent No. 2’s infringement rights.

On the delays in Respondent No. 2’s application, the court carefully examined the procedural history spanning the period from September 2007 to April 2025 and attributed the delay entirely to the failures and administrative delays of the Trade Marks Registry including a failure to communicate the refusal order, non-response to form TM-15 filings and reminder letters and the prolonged pursuit of opposition proceedings. The court held that a party cannot be penalised for delays that are attributable to the administrative inaction of the registry rather than any voluntary non-use or abandonment on the part of the applicant. This finding was significant because it distinguished the present case from scenarios where an applicant’s non-use might be indicative of abandonment, as discussed in McCarthy on Trademarks and Unfair Competition cited by the appellant.

Doctrinal Significance

The judgment in Parle Products Pvt. Ltd. v. The Registrar of Trade Marks & Anr. is a significant Division Bench decision on one of the most commercially important and frequently contested questions in Indian trade mark law: the inter-relationship between priority of application for registration and priority of use in the market, particularly in situations where both competing parties have filed applications for identical marks on a “proposed to be used” basis within a short time of each other.

The judgment’s most significant doctrinal contribution lies in its clear and authoritative affirmation that where two parties file applications for registration of the same mark on a “proposed to be used” basis, the date of the application for registration is the legally determinative date for the purpose of adjudicating entitlement to registration under Section 18 of the Trade Marks Act, 1999. The court expressly rejected the submission that subsequent commercial use in the interregnum by one applicant could override the prior applicant’s right to registration, holding that to accept such an argument would fundamentally undermine the registration system by discouraging applicants from seeking registration, would incentivise deliberate third-party use of pending marks to create a fait accompli and would render the entire mechanism of trade mark registration based on “proposed to be used” applications legally precarious.

The judgment also makes an important contribution to the ongoing debate about the scope and applicability of Neon Laboratories Ltd. v. Medical Technologies Ltd. Multiple High Court benches had grappled with the question of whether the Supreme Court’s pronouncements in that case emphasizing the primacy of the “first in the market” test and the superiority of prior use rights over prior registration established a general principle applicable across all trade mark disputes or were confined to the specific context of interim injunction applications in passing off actions. The Division Bench in this case, following a line of coordinate bench decisions, firmly placed Neon Laboratories in the latter category, clarifying that it is not authority for a Section 34 defence in registration or opposition proceedings and that its ratio does not extend to situations where the competing party (the alleged registered proprietor) has never commenced commercial use of the mark.

The judgment’s treatment of the approbation and reprobation principle in the trade mark context is equally significant and serves as a practical reminder to litigants and practitioners of the binding consequences of representations made before the Trade Marks Registry. The court’s holding that a party which obtains its own registration by representing that a competing mark is visually, phonetically and conceptually different from its own cannot later contend that the same competing mark is deceptively similar and liable to be refused registration applies a well-established equitable principle to the specific procedural context of trade mark examination and opposition proceedings, with potentially wide consequences for strategic litigation conduct in trade mark disputes.

Finally, the judgment’s analysis of administrative delay as a factor in assessing the rights of a “proposed to be used” applicant who has not yet commenced commercial use provides an important nuance to the general principle that non-use may indicate abandonment. By holding that delays attributable to the Trade Marks Registry’s administrative failures and the prolonged pursuit of opposition proceedings cannot be held against the applicant, the court ensured that the protection afforded by Section 18 to good-faith applicants who diligently pursue their applications is not inadvertently undermined by the systemic inefficiencies of the trade mark registration process itself.

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