Prior Use vs Prior Registration in Indian Trademark Law: Section 34 and the Rights of a Prior User

A registration certificate looks like the end of an argument. It is issued by the Registrar, it is entered on a public register, and it carries the statutory presumptions of validity. Yet Indian trademark law has never treated registration as the last word on who owns a mark. The Trade Marks Act, 1999 sits alongside the common law of passing off, which protects goodwill built through use and not through any filing, and the Act itself contains a provision, Section 34, that disables even a registered proprietor from restraining a person who used the mark before the proprietor did. The result is that two parties can each hold a good claim to the same mark, one grounded in the register and the other in the market, and the courts must decide which prevails.

The question is a daily one in commercial practice. A business that has traded for years under a name without registering it discovers that a competitor has registered an identical mark and sent a cease-and-desist notice. A registered proprietor sues for infringement and is met with the answer that the defendant was using the mark long before the registration. A foreign brand that has built reputation abroad finds a local trader holding the Indian registration. In each case the outcome turns on the interaction of Sections 18, 23, 27, 28, 29 and 34, and on a body of decisions of the Supreme Court and the Delhi High Court that has, in the last two years especially, sharpened both the strength and the limits of the prior user’s position.

This article sets out that law. It reads Section 34 closely, examines the Supreme Court’s decisions in S. Syed Mohideen and Neon Laboratories, explains what continuous use means in evidence, and then turns to the limits of the defence, as the Delhi High Court has drawn them in the Mayo Clinic litigation, in Products and Ideas v. Nilkamal and in Parle Products. It closes with a comparison with the position in the United States and the TRIPS framework and with practical observations for prior users and for registered proprietors.

The Competing Claims – Registration, Use and the Scheme of the Act

The Act gives a registered proprietor substantial rights. Section 28(1) confers the exclusive right to use the mark in relation to the goods or services for which it is registered and to obtain relief for infringement, and Section 29 defines infringement by reference to the use of identical or similar marks. Section 23 provides that registration relates back to the date of application, so that the proprietor’s priority is counted from the day of filing. Section 18 allows any person claiming to be the proprietor of a mark used or proposed to be used by him to apply for registration.

Three features of the Act qualify this picture. Section 28(1) opens with the words “subject to the other provisions of this Act”, which makes the exclusive right defeasible by those provisions. Section 27(2) declares that nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as those of another, or the remedies in respect thereof, so that the common law action is preserved intact against registered and unregistered defendants alike. And Section 34, headed “Saving for vested rights”, provides that nothing in the Act shall entitle the proprietor or registered user of a registered trade mark to interfere with or restrain the use by any person of an identical or nearly resembling mark in relation to goods or services in relation to which that person, or a predecessor in title, has continuously used it from a date prior to the proprietor’s first use or the date of registration, whichever is the earlier.

The structure of the Act therefore recognises two sources of right in a mark, the register and the market, and it resolves their collision in favour of the market where the market came first. That choice reflects the policy of the common law, which rewards the person who has created the goodwill, and the practical fact that a mark identifies the source of goods only through use.

Section 34 Read Closely – Text, Two Limbs and “Whichever Is the Earlier”

The text of Section 34 has four parts. The first defines who is protected: any person who, or whose predecessor in title, has used a mark identical with or nearly resembling the registered mark. The second states what is protected: continued use of the mark in relation to the goods or services in relation to which the use has been made. The third sets the condition: the use must have been continuous, and it must have begun on a date prior to the earlier of two events, namely the use of the registered mark by the proprietor or a predecessor in title, and the registration of the mark in the name of the proprietor or a predecessor. The fourth is a direction to the Registrar: on such use being proved, the Registrar shall not refuse to register the prior user’s own mark by reason only of the registration of the first-mentioned mark.

The phrase “whichever is the earlier” is the key to the provision. A prior user does not need to have started before the registrant’s registration only; the use must precede both the registrant’s first use and the registrant’s registration, so that it is the earlier of those two dates that fixes the cut-off. A proprietor who began using the mark in 2005 and registered it in 2010 can be defeated only by a user whose continuous use dates from before 2005. A proprietor who registered in 2005 without having used the mark until 2010 can be defeated by a user whose use dates from before the 2005 registration. The Supreme Court has relied on this very drafting, with its two limbs and its “whichever is the earlier” formula, to hold that the legislature meant to compare more than the bare claims of use, and the point is developed below.

Two further observations on the text follow. Section 34 protects use “in relation to goods or services in relation to which” the prior user has used the mark, so the saving is confined to the goods or services of the prior use and does not extend to a general licence to use the mark across the specification. And it operates as a shield against interference by the proprietor and the registered user. It is a defence and a bar to relief, and it does not by itself confer a right to sue, although the prior user’s passing-off action under Section 27(2) is a separate source of an affirmative right.

The Supreme Court – S. Syed Mohideen and Neon Laboratories

The two decisions on which the modern law rests were both delivered in 2015 and reported in the same volume of the Supreme Court Cases. In S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the respondent’s family had sold a sweet known as Iruttu Kadai Halwa in Tirunelveli since 1900, while the appellant registered a similar mark in 2007. The Supreme Court held for the prior user. Reading Sections 27, 28, 29 and 34 together, it held that the rights conferred by registration are subject to the rights of the prior user, that the scheme of the Act places the prior user’s rights above those of a registered proprietor, and that the action for passing off based on the prior user’s goodwill remains unaffected by any registration. It added that the rights in a passing-off action originate in common law and not in the Act, but that, even so, the prior user’s rights override those of a subsequent user who has obtained registration.

In Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, decided on 5 October 2015, the competing marks were PROFOL and ROFOL. The trial court granted an injunction in a passing-off suit in favour of the party that had used PROFOL first, and the Gujarat High Court affirmed it. The Supreme Court dismissed the appeal, describing the “first user” rule as a seminal part of the Act, and held that a proprietor of a registered mark does not have the right to prevent use by another of an identical or similar mark where that use commenced prior to the proprietor’s use or the date of registration. The Court rejected the argument that a prior registration, which relates back to the date of application, must prevail over actual prior use, observing that the legislature had provided for the prior user’s protection under Section 34 after considering both use and registration. A commentary on the decision made the same point from the drafting: if the legislature had meant only to compare the user claims of the two parties, it would not have included clause (b) of Section 34, which refers to the date of registration, or the words “whichever is the earlier”.

These two decisions settle three propositions. Priority in use is superior to priority in registration, at least where the prior use is proved. The prior user’s protection operates both as a defence to infringement under Section 34 and as the foundation of a passing-off action under Section 27(2). And a registered proprietor can be restrained by the very court to which it comes for an injunction.

What “Continuously Used” Requires – Proof of Use in India

The weight of Section 34 litigation lies in the proof of continuous use, and the recent decisions are demanding. In Products and Ideas India Pvt. Ltd. v. Nilkamal Limited, FAO(OS)(COMM) 111/2025, decided by a Division Bench of the Delhi High Court on 23 March 2026, the plaintiff was the Indian exclusive agent of a Chinese manufacturer of induction cookers and had registered the mark STELLADEXIN in Classes 7, 9 and 11 with effect from February 2022, with annual sales under the mark of about ₹16 crores by 2022-23. The manufacturer, which was impleaded as a defendant, claimed prior use of the STELLA mark in India since 2013 through a distributor and use in China since 2002. A Single Judge accepted the manufacturer’s defence under Section 34, and the Division Bench reversed.

The Division Bench held that Section 34 requires continuous use in India that predates both the plaintiff’s registration and its first use, and that continuity means an unbroken record of commercial activity and not a handful of transactions spread over several years. The manufacturer’s evidence consisted of four invoices from 2012 to 2016. Two did not mention the STELLA or STELLADEXIN marks at all, and two were proforma invoices, which are tentative offers of sale and do not prove that goods changed hands. The Court held that these could not demonstrate continuous use. It also held that use of the mark in China was irrelevant to an infringement action in India, because foreign use matters only in a passing-off action in which the spill-over of overseas reputation is specifically pleaded. And it held that a reseller’s liability is not derived from its supplier’s, since importing goods under another’s Indian registered mark is independently an act of infringement under Section 29(6)(c).

The same insistence appears in the earlier decision of the Delhi High Court in Peps Industries Pvt. Ltd. v. Kurlon Ltd., which, following the Bombay High Court’s decision in Kamat Hotels (India) Ltd., observed that a defendant who sets up the defence of prior use under Section 34 has to prove the volume of sales, and that the mere issue of an advertisement does not constitute use of a mark. A commentary on a recent decision in the Peps litigation notes that continuity is judged in context, having regard to the nature of the goods and the pattern of trade, and not by a rigid rule that every year must be covered by invoices, but that sporadic and disjointed use will not suffice.

What emerges is an evidentiary standard. The prior user must produce dated sales invoices that name the mark, ledgers, delivery challans and bank records, spread across the whole period claimed, for the goods in question and within India. Advertisements, brochures, online listings and foreign sales will not carry the defence by themselves, and a period of silence in the documents invites the inference that use was interrupted.

The Limits of the Defence – The Mayo Clinic Litigation

Section 34 is also limited by its own terms, and the Delhi High Court restated those limits in Mayo Foundation for Medical Education and Research v. Bodhisattva Charitable Trust, FAO(OS)(COMM) 73/2024, decided by a Division Bench in 2026. The plaintiff, the operator of the Mayo Clinic, held registrations for MAYO and MAYO CLINIC dating from 1992 and 2008, the latter in Class 41 for educational services. The defendants ran hospitals and a school of nursing in eastern Uttar Pradesh under names incorporating MAYO, and said they had used the mark since 1995 for healthcare and since 2011-2012 for education. The Single Judge granted an interim injunction on 29 May 2023, and the defendants appealed.

The Division Bench dismissed the appeal. On Section 34, it held that the defence applies only where the defendant’s use predates both the registration and the use of the plaintiff’s mark. The plaintiff’s registrations dated from 1992 and the defendants admitted that their use began in 1995, so the statutory defence was unavailable, and mere priority of use over some later date is not a defence to infringement unless the requirements of Section 34 are met. The Court added that infringement under Section 29 rests on registration and not on the commercial use of the registered mark, that a challenge based on the plaintiff’s non-use must be brought by an application for removal under Section 47, which the defendants had not filed, and that the defence of acquiescence under Section 33 is confined to cases in which the defendant’s own mark is registered. Since the plaintiff had sent a cease-and-desist notice in 2014, the defendants’ continued use afterwards was at their own risk. The Division Bench did not disturb the Single Judge’s finding that the adoption was dishonest, as the defendants’ own website material referred to Dr William Mayo and the Mayo Clinic.

The decision draws three lines. The date that matters is the earlier of the registrant’s first use and registration, and the prior user must beat that date. A defendant who relies on the proprietor’s non-use must use the Section 47 procedure and cannot simply plead it in answer to a suit. And honesty of adoption, although not a stated element of Section 34, colours the court’s discretion at the interlocutory stage, since a defendant who adopted the mark knowing of the plaintiff will find the equities against it.

Registration Disputes Are Different – The Parle Decision on Section 18

The strength of the prior user’s claim in infringement and passing off does not carry over automatically to the contest for registration. In Parle Products Pvt. Ltd. v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 49/2025, decided by the Delhi High Court in 2026, an applicant had filed for the mark 20-20 in Class 30 on a proposed-to-use basis in September 2007, and Parle filed for the same mark a week later, launched biscuits under it in 2007-2008, and used it continuously from 2008-09. The first application was delayed for some seventeen years by administrative errors and litigation and was published only in 2020. The Registrar dismissed Parle’s opposition in April 2025 on the ground that the earlier applicant was the senior adopter. Parle appealed under Section 91, relying on Section 34, on Section 47 and on Neon Laboratories, N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, and S. Syed Mohideen.

The Delhi High Court dismissed the appeal. It held that, where applications are made on a proposed-to-use basis, Section 18 gives priority to the first applicant, that registration relates back to the date of application under Section 23, and that use by a junior applicant while the senior application is pending is at its own risk. It held that Section 34 operates in passing-off actions and in defence to infringement, and not in a registration dispute under Section 18, and that Section 47 applies only after registration and not during the pendency of an application. It distinguished Neon Laboratories on the ground that the “first in the market” test applies to passing-off suits and not to priority between applications, and it applied the principle that a party cannot approbate and reprobate, since Parle had told the Registry in 2008 that its mark was different from the earlier applicant’s.

The distinction is important for planning. A prior user can defend an infringement suit and can sue for passing off, but it will not necessarily win a contest in which both parties are applicants and the opponent filed first. The remedy open to the prior user in that setting is to oppose or to seek rectification on the ground of passing off under Section 11(3), and the Parle decision suggests that a party who enters the market while a senior application is pending bears the risk that the application will succeed.

Passing Off and the Prior User’s Affirmative Rights – Goethe-Institut

Where the prior user’s use is established, the court may protect it affirmatively. In Goethe-Institut E.V. v. Abhishek Yadav, CS(COMM) 541/2024, Mini Pushkarna J. of the Delhi High Court granted an interim injunction restraining the defendants from using the mark “Max Mueller Institute”, or any deceptively similar name, in connection with German language education, although the defendants held a registration and the plaintiff’s own applications for “Max Mueller Bhavan” were pending. The Court reaffirmed that the rights of a prior user prevail over those of a registered proprietor and held that registration does not confer unfettered rights where it impinges on an existing user’s long-established goodwill in the market. The case illustrates the combined operation of Sections 27(2) and 34: the prior user is protected from the registrant’s suit and may in addition restrain the registrant’s use where it amounts to passing off.

The requirements of a passing-off action, goodwill, misrepresentation and damage, are those the Supreme Court has laid down in its decisions on the tort, and the evidence of goodwill overlaps with the evidence of continuous use. Foreign reputation can found a claim only where it is pleaded and proved to have spilled over into India, which is the principle on which the Division Bench rejected the manufacturer’s Chinese use in the Products and Ideas case, and the transborder reputation doctrine of N.R. Dongre v. Whirlpool Corporation remains the foundation for such claims.

The Prior User’s Own Registration – Section 34, Section 57 and the Section 124 Route

The last sentence of Section 34 allows the prior user to register its own mark on proving the prior use. In practice, the prior user who wishes to secure its position should apply, and where the competing registration already exists, it should consider an application for rectification under Section 57 on the ground that the registration was obtained in contravention of the Act, for instance because the mark was not distinctive of the registrant’s goods in view of prior use, or because its use would be prohibited by the law of passing off under Section 11(3). A defendant who raises the invalidity of the plaintiff’s registration in an infringement suit follows the procedure in Section 124, under which the court stays the suit and allows rectification proceedings to be taken in the High Court if it is satisfied that the plea is prima facie tenable, as the Supreme Court explained in Patel Field Marshal Agencies v. P.M. Diesels Ltd.

A prior user who has been using the mark in a limited area or on limited goods should note that registration of its own mark will be tested in the usual way for distinctiveness and for conflict under Section 11. Honest concurrent use under Section 12 offers a further route for registration where marks are similar, although it is a discretionary power of the Registrar and not a right.

The International Picture – TRIPS, the United States and the United Kingdom

The Indian preference for prior use is consistent with the international framework. Article 16(1) of the TRIPS Agreement gives the owner of a registered mark the exclusive right to prevent third parties from using identical or similar signs where confusion is likely, but provides that these rights shall not prejudice any existing prior rights and shall not affect the possibility of Members making rights available on the basis of use. Section 34 and Section 27(2) are the Indian implementation of that reservation.

The United States has an equivalent in the prior-user defence in 15 U.S.C. section 1115(b)(5), under which a party who adopted a mark without knowledge of the registrant’s prior use, and has used it continuously from a date before the registrant’s constructive use date, may continue to use it, although the defence is confined to the area of such continuous prior use. The comparison is useful in two respects. The American defence requires adoption without knowledge, an element absent from the text of Section 34, though Indian courts consider honesty in the exercise of their discretion. And it is territorially limited, whereas Section 34 as drafted is not. Systems that give registration greater priority, such as the first-to-file rule applied in much of the European Union, usually allow earlier local rights to survive in a limited form, which shows that the Indian provision belongs to a wider recognition that registration cannot extinguish earlier goodwill.

Practical Observations for Prior Users and Registered Proprietors

A prior user should begin by assembling the record. The evidence should consist of dated invoices that name the mark, in every year of the claimed period, together with ledgers, delivery documents, bank entries, advertising material and, where relevant, evidence of goodwill such as sales figures and customer testimonies. The prior user should confirm that the use is in India, on the goods in question, and uninterrupted. It should apply for registration promptly, since the Parle decision shows that an unregistered user who enters the market while another’s application is pending takes a risk. It should send a response to any notice, asserting Section 34 and Section 27(2), and, where the registrant’s mark is vulnerable, it should consider a rectification petition.

A registered proprietor should conduct searches before filing and before enforcement, and should investigate the history of the defendant’s use before suing. A proprietor whose own use began after another’s should expect Section 34 to be raised and should be ready to test the defendant’s proof, using the standards in Products and Ideas and Mayo. The proprietor should keep records of its own first use and registration dates, since these fix the cut-off date. It should also note that a registration that is not used is exposed to an application under Section 47, and that a long delay in enforcement may be met with arguments about honest adoption and equities, although the statutory acquiescence defence in Section 33 is confined to registered marks.

Conclusion

Indian trademark law gives primacy to the party that created the goodwill, and Section 34 is the statutory expression of that policy. The text defines the prior user by continuous use from a date before the earlier of the proprietor’s first use and its registration, and the Supreme Court in S. Syed Mohideen and Neon Laboratories has held that this protection places the prior user’s rights above those of a registered proprietor, both as a defence to infringement and as the basis of a passing-off action. The registered proprietor retains the benefit of registration in other respects, such as the presumption of validity and the priority of an earlier application, but it cannot restrain a proven prior user.

The recent decisions of the Delhi High Court show that the protection is real but conditional. It requires proof of continuous use in India, supported by documents that name the mark and cover the period claimed, as the four invoices in Products and Ideas failed to do. It requires that the use precede the proprietor’s registration and first use, as the 1995 use in the Mayo litigation did not. And it does not extend to a contest for registration between competing applicants, where, as in Parle, the filing date governs. A prior user who documents its use, registers promptly and acts on the first notice will find that Section 34 is a strong shield. A registered proprietor who knows the history of its mark, and the history of those who use similar marks, will find that the register protects it best when it is supported by evidence of use that goes back as far as anyone else’s.

References

1. The Trade Marks Act, 1999, Government of India – https://legislative.gov.in/sites/default/files/A1999-47.pdf
2. Section 34, Trade Marks Act, 1999 (bare act text) – https://www.advocatekhoj.com/library/bareacts/trademarks/34.php
3. Section 34, Trade Marks Act, 1999, Indian Kanoon – https://indiankanoon.org/doc/1478365/
4. Supreme Court of India, Judgments Portal – https://main.sci.gov.in
5. Delhi High Court, Judgments Portal – https://delhihighcourt.nic.in
6. The Rights of Prior Users of Trade Mark under the Trade Marks Act, 1999 (discussing S. Syed Mohideen and Neon Laboratories), SCC Online Blog – https://www.scconline.com/blog/post/2022/12/05/the-rights-of-prior-users-of-trade-mark-under-the-trade-marks-act-1999/
7. Products and Ideas India Pvt. Ltd. v. Nilkamal Limited (Delhi High Court, Division Bench, 23 March 2026), Indian Kanoon – https://indiankanoon.org/doc/32418255/
8. Mayo Foundation for Medical Education and Research v. Bodhisattva Charitable Trust (Delhi High Court, Division Bench, 2026), case report –https://www.lexorbis.com/registration-prior-use-and-trademark-enforcement-delhi-high-court-examines-the-scope-of-trademark-protection/
9. Parle Products Pvt. Ltd. v. The Registrar of Trade Marks (Delhi High Court, 2026), case report – https://sunslegal.com/2026/04/29/delhi-high-court-reaffirms-filing-date-priority-under-section-18-of-the-trade-marks-act-1999-in-parle-case/
10. Goethe-Institut E.V. v. Abhishek Yadav (Delhi High Court), case report – https://thelegalaffair.com/news/delhi-high-court-upholds-prior-user-rights-over-registered-trademark-in-educational-services-dispute/
11. Peps Industries Pvt. Ltd. v. Kurlon Ltd. (Delhi High Court), case analysis – https://www.mondaq.com/india/trademark/956548/case-analysis-peps-industries-v-kurlon-ltd
12. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Article 16 – https://www.wto.org/english/docs_e/legal_e/27-trips.pdf

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