Delhi High Court
Parle Products Pvt Ltd vs The Registrar Of Trade Marks & Anr on 28 July, 2026
Author: V. Kameswar Rao
Bench: V. Kameswar Rao, Manmeet Pritam Singh Arora
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 28.04.2026
Judgment delivered on: 28.07.2026
Judgment uploaded on: As per Digital Signature~
+ LPA 316/2026 & CM APPL. 27819-20/2026
PARLE PRODUCTS PVT LTD .....Appellant
versus
THE REGISTRAR OF TRADE MARKS & ANR. .....Respondents
Advocates who appeared in this case
For the Appellant : Mr. J Sai Deepak, Senior Advocate along
with Mr. Bikash Ghorai, Mr. Neeraj
Bhardwaj, Mr. Salil Oberoi, Ms. Krati
Fagna and Ms. Purnima, Advocates.
For the Respondent : Mr. Gaurav Barathi SPC with Mr. Chirantan
Priyadarshan, Advocate for R1.
Mr. Ajay Sahni, Mr. Chirag Ahluwalia and
Mr. Mohit Maru, Advocates for the R2.
CORAM:
HON'BLE MR. JUSTICE V. KAMESWAR RAO
HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA
JUDGMENT
V. KAMESWAR RAO, J.
1. This appeal has been filed with the following prayers:
“a. Set aside the impugned judgment and order passed by the
Ld. Single Judge of the Hon’ble High Court of Delhi in
C.A.(COMM.IPD-TM)49/2025;
b. Allow the present appeal and consequently quash and set
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aside the order passed by the Registrar of Trade Marks, being
illegal, perverse and non speaking;
c. pass such other and further orders as this Hon’ble Court may
deem fit in the facts and circumstances of the present case and
in the interests of justice.”
FACTUAL BACKGROUND
2. In essence, the facts surrounding the present controversy are that the
appellant has filed this appeal laying a challenge to the order dated
10.03.2026 (impugned order) passed by the learned Single Judge in C.A.
(COMM.IPD-TM) 49/2025 and IA No. 19990/2025. The appeal before the
learned Single Judge was in respect of an order dated 29.04.2025,
(impugned order) which was passed by the respondent no.1/Registrar of
Trade Marks, New Delhi (Registrar) dismissing the opposition no.1075195
filed by the appellant against the respondent no.2 herein in Application
No.1606/2026 dated 27.09.2007 for registration of the Trademark ’20-20′ in
Class 30. The appellant challenged respondent no.1’s order dated
29.04.2025 in C.A.(COMM.IPD-TM) No.49/2025, which has been
dismissed by learned Single Judge vide order dated 10.03.2026. Hence, this
appeal is assailing the said order of the learned Single Judge, which
dismissed the appeal of the appellant.
CONTENTIONS OF THE APPELLANT
3. Mr. J. Sai Deepak, learned Senior Counsel for the appellant stated that
the appellant Company, Parle Products Pvt. Ltd., is engaged in the business
of manufacturing and marketing, inter alia, biscuits, cookies, confectionery,
snack foods, bakery products, chips, wafers, potato flakes, namkeen, cereal
preparations, atta (flour), toffees, candies, chocolates, cakes, pastries, sweets
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and savory products, etc., and has been carrying on its said business under
the trade name Parle Products Pvt. Ltd. for several years.
4. The appellant’s case is that it is the registered proprietor and the
original & honest adopter of the trade marks ’20-20′, “TWENTY-20” and
“T20” to its aforesaid goods and business. The registered marks of the
appellant under the provisions of the Trade Marks Act 1999, (hereinafter
‘the Act’) are as follows:
S. No. Application No. Trade Mark Date of Status
Application
1. 1608181 T20 04.10.2007 Registered
2. 1608182 TWENTY-20 04.10.2007 Registered
3. 1608183 20-20 04.10.2007 Registered
5. It is his submission that at the time of adoption of the mark(s), the
appellant had conducted a thorough preliminary search and had not found
any conflicting mark in the records of the Trade Mark Registry.
Consequently, the appellant decided to adopt the ’20-20′ trade mark and
applied for the same on 04.10.2007.
6. It is the appellant’s case that it has continuously and honestly used
the mark ’20-20′ in class 30 goods since 2007-2008, and is thereby entitled
to the exclusive rights, goodwill and reputation. The appellant’s brand is a
leading and widely recognized trade mark among the consumers and has
exclusively been associated with the appellant in the eyes of the public and
in trade and therefore, has acquired secondary meaning. The mark adopted
by the appellant is inherently distinctive. This can be evidenced by the
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appellant’s invoices of the year 2009 with respect to the said trade mark.
Therefore, the said marks qualify to be declared as well known trade marks
under the ambit of Section 2(1) (zg) of the Act.
7. It is also the appellant’s case that it has extensively advertised and
promoted its trade marks across various media, incurring substantial
expenditure, thereby strengthening and sustaining the solid goodwill and
enduring reputation associated with the said trade marks.
8. It is his submission that the respondent no.2 herein, had on
27.09.2007 filed a trade mark application no. 1606126 to apply for the
registration of trade mark ’20-20′ in class 30, on a ‘proposed to be used’
basis in respect of its goods. This application was advertised in the trade
marks journal no. 1960 dated 10.08.2020. Pursuant thereto, the appellant
filed a notice of opposition, based on the respondent’s application, on
25.11.2020. To this notice, the respondent no.2 filed its counter statement on
01.02.2021. This was followed by the appellant filing his evidence in
support of this opposition on 16.11.2022, further followed by the respondent
no.2’s evidence on 09.01.2023. Hence, upon the pleadings being complete,
the matter was listed for final hearing on 17.04.2025 before the Registrar.
On the said date, the parties were directed to file their written submissions.
The Registrar passed the impugned order dated 29.04.2025 whereby it
dismissed the opposition of the appellant and allowed the respondent no.2’s
application to proceed for registration of their mark.
9. It is his submission that the Registrar issued the registration certificate
bearing registration no.3855723 to the respondent no.2 herein on the same
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day, without waiting for the expiry of the appeal period prescribed under
Section 91 of the Act. Challenging this order dated 29.04.2025, the appellant
preferred an appeal before the learned Single Judge of this Court inter alia
seeking rectification/cancellation of the said registration of the respondent
no.2, which was wrongly dismissed by the learned Single Judge vide
impugned order dated 10.03.2026.
10. It is his case that the judgment is gravely erroneous and disregards the
settled principles of trade mark law. The priority in law is determined by
“first use in the market” as the rights in a trade mark emanate from the
actual commercial use of the mark and the goodwill generated by it and not
by merely applying for its registration on a ‘proposed to be used basis’. The
learned Single Judge has wrongly given determinative value to the
respondent no.2’s earlier filing date and completely ignored that it was the
appellant in fact, who had introduced goods bearing the mark ’20-20′ in the
market and has continuously and extensively used the same.
11. It is his submission that the “first in the market” test supposes that
even a prior applicant/registrant cannot defeat the rights of a party that has
used the mark earlier and has built its substantial goodwill based on the
earlier presence in the market. The rights of prior use prevail over the
priority of registration. Hence, the learned Single Judge could not have
decided the case in favour of the respondent no.2 by nullifying the Doctrine
of prior use, by allowing registration of a dormant trade mark that has
admittedly never been used in commerce, over a trade mark that has been
extensively promoted and sold goods and has a continuous goodwill
generated in the business. As per Section 34 of the Act, due protection is
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accorded to the prior user of a trade mark. This provision safeguards the
rights of a person who has continuously used a trade mark prior to the
use/registration of a competing trade mark and prohibits a registered
proprietor from interfering with such prior use of the other’s trade mark. The
appellant’s case squarely falls within the protective ambit of Section 34 of
the Act, having built substantial goodwill and reputation.
12. According to him, the impugned judgment is erroneous inasmuch as
there is a fragmented interpretation of various provisions of the Act. Section
18 of the Act has been treated in isolation instead of harmoniously
interpreting the same with Sections 11 and 34 of the Act to give effect to the
legislative intent. Section 18 cannot be construed to confer absolute priority
on the date of application, particularly when such interpretation would
defeat the rights of a prior user protected under Section 34 and also
prohibition contained in Section 11(3)(a) against registration of marks.
Registration rights are not absolute but are subject to other provisions of the
Act including Section 34. Hence, the failure to adopt such a harmonious
interpretation constitutes a manifest error of law, warranting interference by
this Court.
13. It is stated that the registration of the respondent no.2’s trade mark is
ex facie barred under Section 11(3)(a) of the Act, which prohibits the
registration of a trade mark, which is liable to be prevented by the law of
passing off. The provision mandates that any subsequent use of an
identical/deceptively similar trade mark over the prior use of a trade mark
which has acquired goodwill/reputation, which is likely to cause confusion
or misrepresentation must be refused registration. The rights in a passing off
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action are superior to the statutory rights conferred by registration. In light
of the extensive use of the appellant’s trade mark, any use by the respondent
no.2 of the same trade mark would inevitably result in deception and passing
off. All the above stated provisions and principles directly bar the
respondent no.2’s trade mark to subsist and hence the respondent no.2 must
be restrained in a passing off action at the instance of the appellant herein.
Without any actual use in the course of trade, the respondent no.2’s use of
the trade mark in the market will cause confusion and misrepresentation
inevitably.
14. He heavily relied on the judgment of the Supreme Court in the case of
Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672.
In this case, the Supreme Court has discussed the first user rule under
Section 34 and held that rights in a passing off action emanate from common
law and are superior to rights conferred by registration. Hence, even a
registered proprietor cannot be allowed to harm the established goodwill of a
trademark in prior use. According to him, the interpretation adopted by the
learned Single Judge defeats the legislative intent underlying Section 34,
which is to protect the commercial reality and consumer association built
through actual use. If mere filing of an application on a ‘proposed to be
used’ basis, without any bona fide use were to override the rights of a prior
user, it would encourage trade mark squatting and override the rights
provided to a prior user. The learned Single Judge, by failing to apply these
principles decided the issue in favour of the respondent no.2 which is
affecting the business of the appellant and diluting its reputation. The
relevant paragraphs of the judgment in Neon Laboratories Ltd. (supra)
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read as under:
“11 . …. What has actually transpired is that after applying for
registration of its trade mark Rofol in 1992, the appellant/
defendant took no steps whatsoever in placing its product in the
market till 2004. It also was legally lethargic in not seeking a
curial restraint against the respondent-plaintiffs. This
reluctance to protect its mark could well be interpreted as an
indication that the appellant-defendant had abandoned its mark
at some point during the twelve-year interregnum between its
application and the commencement of its user, and that in 2004
it sought to exercise its rights afresh. It would not be unfair or
fanciful to favour the view that the appellant/defendant’s
delayed user was to exploit the niche already created and built-
up by the respondent-plaintiffs for themselves in the market.
The ”first in the market” test has always enjoyed pre-eminence.
We shall not burden this judgment by referring to the several
precedents that can be found apposite to the subject. In the
interest of prolixity we may mention only NR. Dongre v.
Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5
SCC 714] and Mi/met Ojtho industries v. Allergan Inc. [Mi/met
Oftho Industries v. Allergan Inc., (2004) 12 SCC 624]. In
Whirlpool, the Worldwide prior user was given preference nay
predominance over the registered trade mark in India of the
defendant. In Mi/met, the marks of pharmaceutical preparation
were similar but the prior user worldwide had not registered its
mark in India whereas its adversary had done so. This Court
approved the grant of an injunction in favour of the prior user.
Additionally, in the recent decision in S. Syed Mohiden v. P.
Sulochana Bai [S. Syed Mohiden v. P. Sulochana Bai, (2016) 2
SCC 683 : (2015) 7 Scale 136] this Court has pithily
underscored that the rights in a passing-off action emanate
from common law and not from statutory provisions,
nevertheless the prior user’s rights will override those of a
subsequent user even though it had been accorded registration
of its trade mark. “
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15. It is the case of Mr Sai Deepak that the learned Single Judge has
erroneously distinguished the binding precedent of Neon Laboratories
(supra) in the impugned judgment, which proceeds on the premise that
Neon Laboratories (supra) is confined to cases of passing off and therefore
inapplicable to the present dispute concerning registration and cancellation.
This approach is fundamentally flawed, as the ratio of Neon Laboratories
(supra) is not limited to the form of action, but is rooted in the interpretation
of statutory provisions, particularly Section 34 of the Act, and the
overarching principle that priority of use prevails over priority of
registration. The Supreme Court unequivocally held that the “first in the
market” test enjoys primacy and that registration cannot defeat the rights of
a prior user who has established goodwill through actual use. On the other
hand, the distinction drawn by the learned Single Judge ignored the fact that
the said decision is of general application and must guide adjudication of all
disputes and must not be confined merely to injunction proceedings. The
decision could not have been distinguished/disregarded merely on the
factual differences. The attempt to differentiate the present case from the
judgment in Neon Laboratories (supra) on the premise that the respondent
no.2 had not used the trade mark because the trade mark registration
application was pending, is wholly misplaced/misconceived. In fact, the
ratio of the judgment is grounded in the fact that prior users are entitled to
protection against the registered proprietors and the same is fully applicable
to the present case.
16. Additionally, it is also his case that in the impugned judgment, the
learned Single Judge has heavily relied upon the decision in the case of
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Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd.,
1977 IPLR 83, and similar cases following the ratio in Mohan Goldwater
(supra) such as Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd. &
Ors., 2024:DHC:7655, and Reckitt and Colman Overseas Health Limited
v. Ind Swift Limited and Another, 2025:DHC:11867 without appreciating
that the legal position laid down by this case has been effectively
reconsidered and distinguished in the case of Neon Laboratories (supra)
wherein it is held that rights of a prior user would prevail over that of a
registered proprietor and considerations of public interest and likelihood of
confusion must be accorded paramount importance. In fact, the appellant in
the present case stands on a better footing than in the case of Neon
Laboratories (supra) inasmuch as the appellant is the prior user of the trade
mark in question and the respondent no.2 is only claiming rights as a prior
applicant of the said trade mark. Further, the trade mark ’20-20′ identifies
only with the appellant’s goods in the market. Hence, in light of the same,
the impugned order must be set aside and the registration obtained by the
respondent no.2 must be cancelled.
17. Additionally, it is his case that in the impugned judgment, it has been
incorrectly observed that the appellant’s stand in the examination report
suggested approbation and reprobation. The reply of the appellant to the
examination report was not confined to the respondent no.2 alone but it was
a standard format response to address the multiple cited trade marks in the
examination report.
18. Another ground of challenge of the appellant is that the impugned
order dated 29.04.2025 passed by the Registrar which is the foundation of
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the impugned judgment is perverse and non-speaking. A bare perusal of the
same would reveal that the entire reasoning given by the Registrar is
confined to a mechanical observation that the respondent no.2 is the prior
adopter and prior applicant of the trade mark in question. Nowhere has it
been considered that the appellant is the prior and continuous user of the
said trade mark with an established market presence and reputation. There is
no discussion on these aspects which renders the order arbitrary and
violative of settled legal principles. He stated the learned Single Judge could
not have sanctified the order dated 29.04.2025 by sustaining or modifying it.
The defects of the order could not have been cured by partial affirmation.
Once it was demonstrated that the Registrar has failed to consider the
relevant material and legal principles, the only course available was to quash
the order in its entirety.
19. He has also relied upon Kerly’s Law of Trade Marks and Trade
Names, in the following classic statement of the law, called an “impasse”.
The same reads as under:
“Concurrent right … The statutory right of use given
by registration of a mark does not provide a defence to
proceedings for passing off by the use of the mark;
although it is normally expedient for the claimant in
such cases to apply to revoke the registration. Where a
party applies to register a mark but does not
immediately use it, and another party uses the mark
and generates sufficient goodwill to support a passing
off claim prior to the first use by the registered
proprietor, an impasse ensues. The proprietor of the
mark, if valid, may restrain use by the owner of the
goodwill. However, the proprietorship of the mark
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goodwill was generated after the application to
register the mark.”
20. He has further placed reliance on the judgment of this Court in
Thukral Mechanical Works v. PM Diesels Private Ltd., 2026:DHC:966-
DB and of the Supreme Court in Nandhini Deluxe v. Karnataka Coop.
Milk Producers Federation Ltd., (2018) 9 SCC 183, which have followed
the decision in Neon Laboratories (supra).
21. He relied on Chapter 17 of McCarthy on Trademarks and Unfair
Competition (Fourth Edition), database updated June 2014. The same reads
thus:
“A party cannot claim that use subsequent to
abandonment of a mark has revived the rights obtained
by the earlier use. The Court of Appeals for the
Eleventh Circuit has held that where a party did not
use the mark for 48 years from 1932 until 1980, its use
in 1980 did not retroactively cure its past
abandonment. Rights lost as a result of abandonment
are not revived by such subsequent use. Once a period
of nonuse results in abandonment, a resumption of use
thereafter cannot cure the preceding abandonment.
Such a resumption represents a new and separate use
with a new date of first use. Once a trademark is
abandoned, its registration may be cancelled even if
the registrant subsequently resumes use of the mark.
Possible abandonment by the registrant during a time
period prior to a challenged registration’s filing date is
irrelevant to the validity of that registration. Similarly,
if a challenger’s date of first use is later than the
resumed use of the party alleged to have abandoned
the trademark, then the issue of possible abandonment
is irrelevant to the question of priority.”
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22. It is also stated by him that the impugned trade mark in question was
entered in the Register of Trade Marks w.e.f. 27.09.2007 in favour of the
respondent no.2. However, even after so many years, the respondent no.2
has not used the trade mark till date. On this ground alone, the trade mark of
the respondent no.2 is liable to be removed from the Register of Trade
Marks under Section 47 of the Act.
CONTENTIONS OF THE RESPONDENT NO.2
23. Per contra, Mr. Ajay Sahni, learned counsel for respondent no. 2
submitted that it is an admitted position that the respondent no. 2 had filed
the application for the registration of the trade mark ’20-20′ earlier than the
appellant, on 27.09.2007 vide application no. 1606126 in Class 30 for the
goods ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour
and preparations made from cereals, bread, biscuit, cakes, pastry and
confectionary, candies, ices, honey, treacle, yeast, baking powder, salt,
mustard, pepper, vinegar, sauces, spices, ice, vermicelli and papad’.
24. He stated the application was submitted on a ‘proposed to be used
basis’. It was examined vide examination report dated 10.10.2008, whereby
objections were raised under Sections 9 and 11 of the Act. The respondent
no. 2 filed its reply to the examination report, and even made oral
submissions at the hearing held on 15.03.2010. Thereafter, the order was
reserved, however, the same was not passed or communicated to the
respondent no.2 for long. Even after making a number of personal enquiries,
no order was passed.
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25. Consequently, the respondent no. 2 filed an RTI application dated
08.10.2012. Pursuant to the same, the reply was provided vide letter dated
08.11.2012 stating that the order of refusal had not been informed to the
respondent no. 2 earlier. On 21.11.2012, the respondent no.2 filed form TM-
15 before the Trade Marks Registry to obtain the grounds of refusal and
followed upon the same via reminders dated 21.10.2013 and 03.11.2015.
Despite various number of letters/correspondences, the Trade Mark Registry
did not respond.
26. Aggrieved by such non-response by the Registry, the respondent no.2
filed a Writ Petition before this Court on 10.02.2016 numbered as W.P.(C)
1547/2016, which was disposed of in its favour vide order dated 24.02.2016
whereby the respondent no. 1 was directed to dispose of the pending Form
TM-15 and provide grounds of refusal to the respondent no. 2. On
01.03.2016, the grounds of refusal were communicated to the respondent
no.2 by the Trade Marks Registry for the first time, whereby respondent
no.2 came to know that the application was refused under the provisions of
Section 9(1)(b) of the Act.
27. Thereafter, the respondent no. 2 challenged the said order, which
resulted in the Intellectual Property Appellate Board (“IPAB”) setting aside
the refusal order by passing an order dated 09.08.2019, directing that the
application of the respondent no.2 be proceeded for publication in the Trade
Marks Journal. Accordingly, the said application was published in the Trade
Marks Journal No. 1960 on 10.08.2020.
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28. This application was opposed by the appellant vide notice dated
25.11.2020. This was followed by the respondent no. 2 filing their counter
statement, whereafter the appellant filed its evidence under Rule 45 on
16.11.2021. The respondent no. 2 filed its evidence under Rule 46 on
09.01.2023. The final hearing was held on 17.04.2025. Finally, vide the
impugned order dated 29.04.2025, the opposition of the appellant was
eventually dismissed by the Registrar of Trade Marks.
29. It is the case of the respondent no. 2 as contended by Mr.Sahni that it
had diligently pursued its application before the Registrar for 17 years. The
respondent no. 2 is the prior adopter of the impugned mark and filed its
application for the registration of the trade mark earlier than the appellant.
30. He made submissions with respect to the proceedings that ensued the
application No. 1608181 dated 04.10.2007 of the appellant herein for the
registration of the mark in its name. He stated that in the examination report
dated 24.06.2008 which was issued post the application of the appellant on
04.10.2007, apart from other marks, the trade mark of the respondent no. 2
was cited as a conflicting mark under Sections 9 and 11 of the Act.
31. In its reply dated 06.08.2008 to this objection, the appellant had stated
before the Registrar that both the marks are inherently distinctive, when seen
as a whole. Even with respect to Section 11, the stand of the appellant was
that the mark applied for by the appellant is visually, phonetically,
conceptually different from the marks cited as objecting. Hence, the
appellant must not be allowed to approbate and reprobate from its stand
taken on 01.08.2008. Contrary to this reply, the appellant has submitted
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before this Court that the mark of respondent no. 2 ought not to be registered
as it is deceptively similar to that of the appellant.
32. Thereafter, a hearing was held before the Registrar on 22.12.2008. At
this hearing, the appellant presented an application stating that the appellant
is willing to restrict the specification of the goods to ‘biscuits’ only.
Pursuant to the hearing dated 22.12.2008, the objection under Section 9 of
the Act was waived. As regards Section 11 of the Act, the mark was allowed
only in respect of the goods ‘Biscuits only’. However, surprisingly in the
Trade Marks Journal dated 12.06.2017; the advertisement erroneously
specified the entire goods for which the appellant had initially applied being
“biscuits and confectionery, bread, cake, pastry, wafer (biscuits), all being
goods included in class 30, sweets, sweetmeats, toffees, chocolate included
in class 30, ice cream and ice cream mix, products for making biscuits,
essences for food, buns, candy, chewing gum, chicory, atta, flour and
preparations made from cereals, vermicelli and semo lina, mustard powder,
gelatine for food, sphagetty, noodles and other pasta products”.
Fallaciously, the said application was proceeded for registration, which was
granted for the trade mark ’20-20′ in Class 30 on 01.11.2017 relating back
to the date of application for registration i.e. 04.10.2007. This error also got
reflected in the registration certificate, granting the registration to the
appellant for all the goods. No issue was raised by the appellant to the
publication of its mark in the journal, despite knowing that this error has
occurred. Hence, the appellant is wrongly registered as the proprietor of the
trade mark ’20-20′ for goods other than biscuits. Hence, this registration is
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void-ab-initio and illegal. Hence, the registrations of the appellant are liable
to be rectified/ cancelled.
33. He stated that since the appellant has not approached this Court with
clean hands, i.e. with a defective registration, it should not be entitled to any
relief. In view of the same, he submitted that the appeal must be dismissed
with exemplary costs in favour of the respondent no. 2.
34. It is also his submission that it was the responsibility of the appellant
to properly inspect the Register of Trade Marks prior to its adoption of the
impugned mark as the same would have shown that the respondent no. 2 had
already filed its application for the same mark for identical goods prior to it.
Even otherwise, after filing of its application, the examination report dated
24.06.2008 so received by the appellant had highlighted that the identical
trade mark ’20-20′ had already been filed by the respondent no.2, as the
same was cited as a conflicting mark. According to Mr.Sahni, the appellant
should have given up the use of the said mark, however, not having done so,
the appellant took a chance and deliberately continued the use of the
impugned mark. Hence, the appellant had always known about the
respondent no. 2 to be the lawful proprietor and adopter of the impugned
mark and must not be allowed to interfere with the rights of the respondent
no.2 by unlawful subsequent use by it.
35. He stated that the settled principles of law would apply in the present
circumstances that to defeat the statutory right of the respondent no. 2 the
appellant is required to establish use of the said trademarks prior to
27.09.2007 which is the date of registration of the respondent no. 2 and it is
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an admitted case of the appellant that the appellant does not have any use of
any of its said trademarks prior to 27.09.2007 and the present appeal is liable
to be dismissed on this sole ground itself. The appellant has not been able to
prove the use of the mark since 2007, as claimed by it. No documentary
evidence has been filed by it to substantiate this claim. Even if the appellant
claims itself to the registered proprietor of the trade mark ’20-20′, the same
is subsequent to the registration of the respondent no.2, which would remain
wholly unaffected. The subsequent use by the appellant cannot take away
the vested rights of the respondent no.2 in the impugned mark, which
accrues due to prior adoption and prior registration.
36. Mr. Sahni has extensively relied upon the judgment of the High Court
of Madras in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries
Pvt. Ltd and Others, 1977 IPLR 83, which has been followed by this Court
in Enterprises Pvt. Ltd (supra) and Reckitt and Colman Overseas Health
Limited (supra) to state that the date of application would primarily form
the basis for the grant of registration. The use of the mark in the interregnum
would not devolve any special benefit to the user, if the application for
registration is pending. He also placed reliance on the case of Radico
Khaitan Ltd. v. Devans Modern Breweries Ltd., 2019:DHC:1423, which
has distinguished the decision in Neon Laboratories (supra) on the ground
that the same was for passing off and not infringement and hence, the
decision would clearly not apply to the facts of the present case, inasmuch as
in the respondent no. 2 herein has not commenced the use of its trade mark
’20-20′. The appellant in Neon Laboratories (supra) had a registered trade
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mark which it had not used whereas the respondent no. 2’s trade mark only
got registered in the year 2025.
37. Reliance was also placed by him upon the judgment of this Court in
Vasundhara Jewellers Pvt Ltd. v. Vasundhara Fashion Jewellery LLP &
Ors., 2025 SCC OnLine Del 5660, Pernod Ricard India Private Limited &
Anr. v. Karanveer Singh Chhabra reported in 2025 SCC OnLine SC 1701
and Meghraj Biscuits Industries Ltd v. Commissioner of Central Excise,
U.P., AIR 2007 SC 1433 to contend that as long as the mark is registered, it
is safeguarded under the provisions of the Act i.e. Section 28 and 29.
ANALYSIS AND CONCLUSION
38. Having heard the learned counsel for the parties and perused the
record, the short issue which arises for consideration in this appeal is
whether the learned Single Judge is justified in dismissing the appeal under
Section 91 of the Act filed by the appellant herein, challenging the order
dated 29.04.2025 passed by the respondent no.1/Registrar of Trade Marks
dismissing the Opposition No.1075195 filed by the appellant herein, in the
Trade Mark Application No.1601626 of the respondent no.2 in Class 30,
which was allowed resulting in registration in favour of the respondent no.2.
39. Before we deal with the submissions, the admitted position that needs
to be placed on record is that both the appellant and the respondent no. 2 had
filed applications for registration of the Trade Mark ’20-20′ in Class 30, the
difference being the application of the respondent no. 2 was earlier, dated
27.09.2007 whereas that of the appellant was subsequent, dated 04.10.2007.
Both the applications were filed on a ‘proposed to be used basis’.
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40. The case of the appellant is that after the filing of the Trade Mark
Application, it later used the mark ’20-20′ in respect of “biscuits, cookies,
confectionery, snack foods, bakery products, chips, wafers, potato flakes,
namkeen, cereal preparations, atta (flour), toffees, candies, chocolates,
cakes, pastries, sweets, savory products, etc.”
41. According to the appellant, it used the mark ’20-20′ between the years
2007-2008 and the Trade Mark registration certificates were issued to the
appellant for the marks ’20-20′, “TWENTY-20” and “T20” under nos.
160181, 160812 and 160813 respectively. The respondent no. 2’s
application for the mark ’20-20′ was advertised in Trade Mark Journal
no.1960 of 10.08.2020. The appellant filed its opposition dated 25.11.2020,
as referred above, to the application of the respondent no. 2. A counter-
statement was filed by the respondent no. 2 to the opposition filed by the
appellant on 01.02.2021. Pursuant to the final hearing, the respondent no. 1
passed the order dated 29.04.2025 dismissing the opposition of the appellant
and allowing the application of the respondent no. 2.
42. The submission of Mr. Sai Deepak is primarily that the learned Single
Judge has overlooked the settled principles that priority in trade mark law is
determined by the first use in the market, as the rights in trade mark emanate
from the actual commercial use of the mark and the goodwill generated by
it, and not merely by applying for registration on a “proposed to be used
basis”. In that sense, the first in the market test supposes that even a prior
applicant/registrant cannot defeat the rights of a party that has used the mark
earlier and built a substantial goodwill based on the earlier presence in the
market. In support of his submissions, he has relied upon Section 34 of the
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Act stating that due protection is accorded to the prior user of the trade
mark. He has drawn our attention to the judgment of the Supreme Court in
Neon Laboratories Ltd. (supra), which decided an interim injunction
application, more specifically, paragraph 11 thereof, which we have already
reproduced above.
43. The learned Single Judge has rejected the reliance placed on the
judgment of Neon Laboratories Ltd. (supra) in paragraphs 37 & 38 of the
impugned order, which we reproduce as under: –
“37. Though the appellant had extensively relied upon
the judgment of the Supreme Court in Neon
Laboratories (supra), this Court is of the considered
opinion that the said judgment was a proposition in the
context of passing off and not infringement. Admittedly,
in the present case respondent no.2 had not
commenced the manufacture of goods using the mark
’20-20′ till date, thus the question or the issue of
passing off does not arise at all. In such circumstances,
as noticed in Radico Khaitan (supra) by this Court in
paragraphs 49 and 50, the ratio in Neon Laboratories
(supra) is constricted only to a case of passing off and
not infringement and moreover neither Neon
Laboratories (supra) nor S. Syed Mohiden v. P.
Sulochana Bai, (2016) 2 SCC 683 are an authority for
a defence under Section 34 of the Act in an action for
infringement of a registered trademark. It is trite that
judgments are not Euclid’s theorem to apply in all
cases without reference to the facts which arise in such
cases. Thus, the question as to whether the appellant
had commenced its manufacturing using the mark ’20-
20′ prior to the respondent no.2 or not would not be
relevant to decide the present controversy.
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38. The facts in the present case appear to be clearly
more in consonance with those which had arisen
before the Madras High Court in Mohan Goldwater
(supra). In Mohan Goldwater (supra), the following
facts had emerged, which are extracted hereunder:-
“1. These two appeals have been filed by the same
appellant under Section 102 of the Trade and
Merchandise Marks Act, 1958, (hereinafter
referred to as “the Act”) against the orders passed
by the Assistant Registrar of Trade Marks
rejecting oppositions Nos. 691 and 692 to
applications Nos. 260504 and 260523
respectively. The first respondent herein who is
the same in both the appeals filed applications
Nos. 260504 and 260523 on 10th November,
1969, for registration of a trade mark consisting
of the words “Silver King” in respect of beer, ale
and stout included in Clause 32 and in respect of
liquors of all kinds included in Class 13,
respectively, stating that the marks were
proposed, to be used in respect of the said goods.
The applications were accepted by the second
respondent and advertised in the Trade Marks
Journal No. 513 dated 16.10.1970 at pages 562
and 564 respectively. The appellant filed notice of
opposition to the registration of the said trade
mark on 15.1.1971 under Section 21 of the Act in
relation to the goods in question setting out the
following main grounds: (1) The opponents had
adopted the trade mark containing the words
“Silver King” in respect of beer manufactured by
them since June 1970, and that the said trade
mark had actually been extensively used by them
since September 1970 as a result of which a great
deal of reputation had accrued around it.
(2) The applicant’s trade mark was deceptively
similar to the trade mark adopted and used by the
opponents and, therefore, the registration of theSignature Not Verified
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applicant’s mark with the words “Silver King”
would be contrary to Section 11(a) of the Act.
(3) The applicants were not the proprietors of the
mark, in respect of the goods for which
registration had been sought, within the meaning
of Section 18(1) of the Act.”
xxx xxx xxx
3. The second respondent then proceeded to
consider the applications for registration in the
light of the opposition, after a personal hearing.
Before the second respondent it was contended by
the opponents that the application for registration
of the trade mark “Silver King” was based on the
proposed adoption of the mark for use in relation
to liquor of all kinds that the opponents had
adopted and used the trade mark “Silver King”
from September 1970 that by such adoption and
user, they had acquired ownership of the trade
mark and, therefore, the registration of the trade
mark in the name of the applicants after the
opponents had acquired ownership therein will be
contrary to section 11(a) of the Act. Dealing with
this objection of the opponents that they having
acquired ownership of the trade mark by long use
subsequent to the filing of the application for
registration, the trade mark could not be
registered in the name of the applicants the
second respondent took the view that in an
application for registration the rights of the
parties were to be determined as on the date of
the application that the question of deception or
confusion under Section 11 must generally be
determined with reference to that date and that in
this case the evidence of user filed by the
opponents from October 1970 being subsequent to
the date of the application, the user was not of any
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proceeded to consider the question whether the
applicants were the proprietors of the mark on
10th November, 1969, named the date of the
application, within the meaning of Section 18(1)
of the Act, and held that the applicants having
proposed to use the trade mark and showed then-
intention to register the same, should be taken to
be the proprietors of the mark on that date and,
therefore the applicants were entitled to have the
same registered. The result was both the
applications for registration of the trade mark
“Silver King” in respect of goods covered by
classes 32 and 33 were allowed and the
oppositions were rejected on 4th August, 1973.
The said decision of the second respondent has
been challenged in these appeals.
4. The contentions raised by the appellants are
these: (1) The applicants not having filed any
evidence by way of affidavits in support of the
application as contemplated by Rule 54 within 2
months from the date of receipt of the copies of
the affidavits in support of the opposition, they
could not be permitted to let in any further
evidence in support of their application, that the
failure to file any evidence in support of the
application as required in Rule 54 would lead to
the inference that the evidence adduced by the
opponents in support of their opposition was not
proposed to be repudiated by the applicants, and
that the affidavit evidence adduced by the
opponents clearly indicated that the applicants
had no intention to use the trade mark which they
sought to register. (2) The applicants had not
acquired any proprietary right in the trade mark
in question either on the date of the application or
at any subsequent date and, therefore, they were
not entitled to have the trade mark registered. (3)
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mark in an extensive manner from October 1970,
they should be taken to have acquired a
proprietary right in the trade mark. (4) The
material date for determining the ownership of the
trade mark was the date of opposition and not the
date of application as had been held by the second
respondent and the opponents having acquired
the ownership in the trade mark by established
user long before the date of opposition any
registration of the mark in favour of the
applicants would infringe Sections 11 and 12 of
the Act.
xxx xxx xxx
9. As regards the second contention as to whether
the applicants have acquired a proprietary right
in the trade mark on the date of the application so
as to enable them to file an application under
Section 18, the learned counsel for the appellants
contends that though the applicants in their
application filed in November 1969 proposed to
use the trade mark, they have not chosen to use
the trade mark till now, that a mere intention to
use is not sufficient to confer a proprietary right
in the mark on the applicants and that a present
intention to the immediate use of the trade mark is
necessary before an application for registration is
filed under Section 18. Section 18 dealing with an
application for registration of a trade mark says
that any person claiming to be the proprietor of a
trade mark used or proposed to be used by him
who is desirous of registering it, shall apply to the
Registrar in the prescribed manner for the
registration of his trade mark. The section
indicates that a person who is actually using a
trade mark or who intends to use a trade mark
can apply for registration. Therefore, the actual
user is not necessary for acquisition ofSignature Not Verified
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proprietary right in a trade mark and an intention
to use and register the trade mark appears to be
sufficient. The question is how that intention is to
be gathered.
10. The applicants have stated that as they
intended to adopt the expression “Silver King” as
their mark, they caused an inspection to be made
of the records in the Registry whether anyone had
used or proposed to use the said mark, and that
only after satisfying themselves that no one has
claimed any proprietary right in the mark they
chose to apply for registration of the mark in
November, 1969. Admittedly the appellants
adopted and used the said mark only in October
1970. If the applicants had no intention to use the
trade mark on the date of the application, they
would not have taken the trouble or causing a
search to be made in the records of the Registry
and applying for the registration of the trade
mark. The only circumstance relied on by the
opponents as indicating that the applicants had no
immediate intention to use the trade mark is that
even after the application for registration of the
trade mark they had not chosen to actually use the
trade mark. I am, however, of the view that this
circumstance will not disprove any intention on
the part of the applicants to use the trade mark.
The application for registration of the trade mark
having been filed, it might be that they waited till
the trade mark is actually registered. It is true
that even after the trade mark had been
registered, the applicants have not used the trade
mark. But the opponents having filed these
appeals challenging the decision of the Registrar,
the applicants might have postponed the user till
the appeals are disposed of in their anxiety not to
take any risk. This conduct of the applicants in not
using the trade mark since the date of the
application will only indicate that they are notSignature Not Verified
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inclined to take the risk pending the decision of
the Registrar of Trade Marks especially when the
registration of the trade marks has been opposed
by the appellants on the ground that they have
already adopted and used trade mark in
connection with the liquor manufactured by them.
xxx xxx xxx
12. It is true, the burden of proving that the trade
mark in respect of which registration is sought is
entitled to go on the register is on the applicant
and if there be any doubt in the matter the
application will have to be refused. It is also well
established that it is incumbent on the applicant to
establish that he is the proprietor of the mark
before his mark could be registered. In this case
the applicants are persons who have proposed to
use the expression “Silver King” as a trade mark
and sought for registration of the same. On the
date of the application for registration of that
mark no one else had designed and proposed to
use the same. Of course they have not chosen to
use the trade mark either before or after the
application for registration was filed. But as
already stated, user is not necessary for filing an
application having regard to the language of
Section 18. If a bonafide intention to use the trade
mark immediately in connection with the goods
manufactured is established, that will enable the
applicant to maintain an application for
registration under Section 18. I am not prepared
to accept the contention of the appellants that
non-preparation and non-user of the mark from
the date of the application till the application
came up for hearing will show that the applicants
have really no intention to use the trade mark.
The applicants had sufficient interest in the mark
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Section 18 as on 10th November, 1969, when no
one had used or proposed to use the trade mark in
question.
13. This leads us to the third contention. It is the
case of the appellants that they have designed,
adopted and used a trade mark with the words
“Silver King” in connection with beer, ale and
stout manufactured by them, that this mark has
acquired a reputation and that, therefore, the
applicants who have not chosen to use the trade
mark till now cannot be enabled to acquire a
proprietary interest in that mark by registering it.
No doubt so long as a mark has not been
registered anyone can adopt and use it and
acquire a proprietary right therein as a result of
such adoption and user. In this case, it has not
been disputed by the applicants that the
appellants have used a trade mark with the words
“Silver King” in connection with beer, ale, and
stout manufactured by them ever since October
1970. According to the appellants they have
adopted and used the trade mark bonafide without
any knowledge of the pendency of the application
for registration of the trade mark “Silver King”
filed by the applicants. There is considerable
evidence in this case to establish that the
appellants have been using the trade mark from
October 1970 in connection with their goods.
However, there is no evidence that the adoption
and user of the trade mark in relation to their
goods is bonafide and without the knowledge of
the pending application for registration by the
applicants in relation to the same trade mark.
Admittedly the appellants have not made any
search in the Registry to find out whether anyone
had already adopted and proposed to use the
trade mark in question. The adoption and user of
the trade mark by the appellants is said to have
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been done casually without reference to the
Register of trade marks. It is contended by the
applicants that the adoption and user by the
appellants of the mark was not bonafide in that
they did not make proper enquiries before such
adoption and user as to whether anyone else had
adopted or proposed to use the same in
connection with his goods. Even so, the user of the
mark will enable the appellants to acquire
proprietary interest therein if no one else had
acquired earlier such interest in the mark, and
this is the position under the common law. Neither
the provisions of the Act nor the rules framed
thereunder prevent anyone else using a trade
mark till the mark is actually registered.
Therefore, there cannot be any doubt that the
appellants can claim to have acquired a
proprietary interest in the mark as a result of the
user from October, 1970 if the applicants had not
earlier acquired any interest in the mark.
14…The question then is, as between the
applicants who have proposed to use the mark
and have sought registration of the same in
November, 1969 and the appellants who have
chosen, to use the mark subsequent to the date of
such application for registration, who has got a
preferential right to use or the proprietary interest
in the trade mark. This question leads us to the
fourth contention as to what is the relevant date
for ascertaining the proprietary interest in a trade
mark for purpose of registration. According to the
applicants, the date of application for registration
is the relevant date while according to the
opponents the relevant date is the date of
opposition. On a due consideration of the matter,
I am of the view that for the purpose of
registration of a trade mark the rights of the
parties have to be usually determined as on the
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date of the application. This is the view taken by
Romer J. in Jellinek’s application (1946) 63
R.P.C. 59 at p. 78. Ciba Ltd. v. M. Ramalingam
MANU/MH/0021/1958 : A.I.R. 1958 Bombay 58
at p. 61 takes the same view. As already stated,
user is not absolutely necessary for the purpose of
maintaining an application for registration. In
this case the application for registration was filed
on 10-11-1969 and the evidence of user filed by
the opponents is from October, 1970. Since the
applicant’s entitlement to registration of a trade
mark has to be decided with reference to the facts
as on the date of the application for registration,
the evidence of user by the opponents subsequent
to the said date cannot be relevant and will not
entitle them to put forward the plea of user in
answer to the earlier application for registration.
The question then is whether the applicants are
entitled to have the mark registered under Section
18(1) notwithstanding its subsequent adoption
and user by the Opponents in October 1970.
15. Section 18(1) of the Act reads as follows:-
“Any person claiming to be proprietor of a
trade mark used or proposed to be used by
him, who is desirous of registering it, shall
apply in writing to the Registrar in the
prescribed manner for the registration of his
trade mark either in Part A or in Part B of
the Register.”
16. Under the said section one has to consider
whether the applicants are persons claiming to be
the proprietors of the mark and whether they have
a present intention to use that mark in respect of
the goods set out in their application. When an
applicant proposes to use a trade mark, he must
show that there is some immediate and present
intention to deal in certain goods or description of
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goods and not a mere general intention of
extending his business at some future time which
he may think desirable. There is an averment in
the counter-statement of the applicants that they
are the proprietors of the trade mark as they
adopted the same in 1969 in good faith after
ascertaining that the said mark has not been
adopted or proposed to be adopted or used by
anyone else. The efforts taken by the applicants in
the choice and adoption of the trade mark after
verification and to have it registered on the date
of the application shows that they had a present
and definite intention to use the mark in
connection with the goods manufactured by them.
They have not subsequently abandoned their
intention to use it, as otherwise they would not
have pursued their application. Besides, the
applicants are already in the wine trade and it is
easy for them to use the trade mark as soon as the
proceedings for registration are concluded. No
doubt, the applicants have not started using the
mark and the opponents have started using the
same. That does not seem to matter in this case.
17. In the matter of Hudson’s trade marks (3
R.P.C. 135 at 160) Cotton L.J. has observed:
“Is a man to be considered as entitled to the
exclusive use of any trade mark when he has
never used it at all? That is a difficulty; but
then, I think, the meaning is this; if a man
has designed and first printed or proposed,
or framed, any of those particular and
distinctive devices which are referred to in
the first part of Section 10 (U.K. Act of 1875)
he is then looked upon as the proprietor of
that which is under that Act a trade mark
and this will give him the right as soon as he
registers it.”
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44. A perusal of the aforesaid would reveal that the learned Single Judge
has primarily distinguished the judgment of Neon Laboratories Ltd. (supra)
by holding that the ratio of the said judgment is in the context of passing off
and not infringement, and in the present case, as the respondent no. 2 has not
commenced manufacturing of goods using the mark ’20-20′ till date, the
question, or issue of passing off does not arise at all.
45. The case of Neon Laboratories Ltd. (supra) centered on a drug of the
respondent no.1/plaintiff therein with a mark “PROFOL” whereas the name
of the therein appellant/defendant no.1’s drug was “ROFOL”. The plaintiff
therein started using the name “PROFOL” in April 1998 and never got it
registered whereas the appellant/defendant no.1 i.e Neon Laboratories Ltd.
got registered the trade mark “ROFOL” in 2001 w.e.f. 19.10.1992 but did
not use it till 2004. Therefore, the appellant/defendant no.1. had a prior
registration whereas the respondent no.1/plaintiff had a prior user date. In
the interregnum, the appellant/defendant no.1 had not only applied for
registration but also commenced production and marketing of the drug. It
was their case that they had built a substantial goodwill in the market for
“PROFOL”. The question which was framed by the Court in that case is as
under:-
“The legal nodus is whether the prior registration
would have the effect of obliterating the significance of
the goodwill that had meanwhile been established by
the Plaintiff-Respondents. Would a deeming provision
i.e. relating registration retrospectively prevail on
actuality – competing equities oscillate around prior
registration and prior user.”
(emphasis supplied)
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46. The Court had in paragraphs 7 to 11 held as under:-
“7. Section 34 of the Trade Marks Act, 1999 (the Act)
deserves reproduction herein:
34. Saving for vested rights.–Nothing in this Act
shall entitle the proprietor or a registered user of
registered trade mark to interfere with or restrain
the use by any person of a trade mark identical
with or nearly resembling it in relation to goods
or services in relation to which that person or a
predecessor in title of his has continuously used
that trade mark from a date prior–
(a) to the use of the first-mentioned trade
mark in relation to those goods or services
be the proprietor or a predecessor in title of
his; or
(b) to the date of registration of the first-
mentioned trade mark in respect of those
goods or services in the name of the
proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not
refuse (on such use being proved), to register the
second mentioned trade mark by reason only of the
registration of the first mentioned trade mark.
This Section palpably holds that a proprietor of a trade
mark 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” rule is
a seminal part of the Act. While the case of the
Plaintiff-Respondents is furthered by the fact that their
user commenced prior to that of the Defendant-
Appellant, the entirety of the Section needs to be taken
into consideration, in that it gives rights to a
subsequent user when its user is prior to the user of the
proprietor and prior to the date of registration of the
proprietor, whichever is earlier. In the facts of the case
at hand, the Defendant- Appellant filed for registration
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in 1992, six years prior to the commencement of user
by the Plaintiff-Respondents. The Defendant-Appellant
was, thus, not prevented from restraining the Plaintiff-
Respondents’ use of the similar mark PROFOL, but the
intention of the Section, which is to protect the prior
user from the proprietor who is not exercising the user
of its mark prima facie appears to be in favour of the
Plaintiff- Respondents.
8. Section 47 of the Act is in the same vein and
statutory strain inasmuch as it postulates the
possibility of a registered mark being taken off the
register on an application being made by any
aggrieved person, inter alia, on the ground that for a
continuous period of five years and three months from
the date on which the trademark was registered, there
was no bona fide use thereof. In the case in hand,
prima facie, it appears that for over five years after a
registration application was made by the Defendant-
Appellant, the mark was not used. Facially, the Act
does not permit the hoarding of or appropriation
without utilization of a trademark; nay the Defendant-
Appellant has allowed or acquiesced in the user of the
Plaintiff-Respondents for several years. The legislative
intent behind this Section was to ordain that an
applicant of a trademark does not have a permanent
right by virtue of its application alone. Such a right is
lost if it is not exercised within a reasonable time.
9. We must hasten to clarify that had the Defendant-
Appellant commenced user of its trademark ROFOL
prior to or even simultaneous with or even shortly after
the Plaintiff-Respondents’ marketing of their products
under the trademark PROFOL, on the Defendant-
Appellant being accorded registration in respect of
ROFOL which registration would retrospectively have
efficacy from 19.10.1992, the situation would have
been unassailably favourable to it. What has actually
transpired is that after applying for registration of its
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trademark ROFOL in 1992, the Defendant-Appellant
took no steps whatsoever in placing its product in the
market till 2004. It also was legally lethargic in not
seeking a curial restraint against the Plaintiff-
Respondents. This reluctance to protect its mark could
well be interpreted as an indication that the Defendant-
Appellant had abandoned its mark at some point
during the twelve year interregnum between its
application and the commencement of its user, and that
in 2004 it sought to exercise its rights afresh. It would
not be unfair or fanciful to favour the view that the
Defendant-Appellant’s delayed user was to exploit the
niche already created and built-up by the Plaintiff-
Respondents for themselves in the market. The ‘first in
the market’ test has always enjoyed pre-eminence. We
shall not burden this Judgment by referring to the
several precedents that can be found apposite to the
subject. In the interest of prolixity we may mention only
N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC
714 and Milmet Oftho Industries v. Allergan Inc.
(2004) 12 SCC 624. In Whirlpool, the worldwide prior
user was given preference nay predominance over the
registered trademark in India of the defendant. In
Milmet, the marks of pharmaceutical preparation were
similar but the prior user worldwide had not registered
its mark in India whereas its adversary had done so.
This Court approved the grant of an injunction in
favour of the prior user. Additionally, in the recent
decision in S. Syed Mohiden v. P. Sulochana Bai
(2015) 7 SCALE 136, this Court has pithily
underscored that the rights in a passing-off action
emanate from common law and not from statutory
provisions, nevertheless the prior user’s rights will
override those of a subsequent user even though it had
been accorded registration of its trademark. Learned
counsel for the Defendant-Appellant has endeavoured
to minimise the relevance of Whirlpool as well as
Milmet by drawing the distinction that those
trademarks had attained worldwide reputation.
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However, we think that as world shrinks almost to
global village, the relevance of the transnational
nature of a trademark will progressively diminish into
insignificance. In other words, the attainment of
valuable goodwill will have ever increasing
importance. At the present stage, the argument in
favour of the Defendant-Appellant that we find holds
more water is that in both Milmet and Whirlpool, as
distinct from the case before us, the prior user of the
successful party predated the date of application for
registration of the competing party. The question to
examine, then, would be whether prior user would have
to be anterior to the date of application or prior to the
user by the Defendant-Appellant. In other words, the
question before the Court would remain whether the
situation on the date of application for registration
alone would be relevant, or whether the developments
in the period between this date and the date of grant of
registration would have any bearing on the rights of
the parties. All these considerations will be cast into a
curial cauldron to be appreciated by the Court before
which the suit is being contested. In these premises, we
cannot conclude that a prima facie case has not been
disclosed by the Plaintiff-Respondents.
10. Since we are confronted with the legal propriety of
a temporary injunction, we must abjure from going
into minute details and refrain from discussing the
case threadbare, in order to preclude rendering the
suit itself an exercise in futility and the decision therein
a foregone conclusion. All that we would say in the
present Appeal is that since the Plaintiff-Respondents
have alleged, and have prima facie supported with
proof, that they had already been using their
trademark well before the attempted user of an
identical or closely similar trademark by the
Defendant-Appellant, the former would be entitled to a
temporary injunction, in light of the abovementioned
‘first in the market’ test. We find that the Plaintiff-
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Respondents have made out a prima facie case. The
two other factors in an interim injunction, namely the
balance of convenience and an irreparable loss, are
both in favour of the Plaintiff- Respondents, given the
potential loss of goodwill and business they could
suffer should an injunction be denied. The Defendant-
Appellant has been injuncted from using the mark
ROFOL since 2005, after having launched products
bearing the mark only in the previous year, so the
balance of convenience is in favour of allowing the
injunction to continue. In Milmet, this Court had taken
note of the fact that the unsuccessful litigating party
had in the duration of the litigation started using
another mark, and found that this would prima facie
assume significance in assessing “irreparable loss”.
11. For manifold and myriad reasons, we are of the
opinion that the decision of the Trial Court, as
affirmed by the First Appellate Court, is reasonable
and judicious, and does not suffer from perversity by
any dialectic that the Defendant-Appellant may proffer.
The Appeal is accordingly dismissed, but with no order
as to costs.” (emphasis supplied)
47. Having noted the conclusion drawn by the Supreme Court, it is
necessary to deal with the submission advanced by Mr. Sai Deepak that the
ratio of the judgment in Neon Laboratories Ltd. (supra) is grounded on the
fact that prior users are entitled to protection against the registered
proprietors and the same is fully applicable to the present case.
48. We agree with the conclusion of the learned Single Judge that the
judgment of the Supreme Court is in the context of passing off action and
the question as to whether the appellant had commenced manufacture of its
goods using the mark ’20-20′ prior to the respondent no.2 would not be
relevant in these proceedings. We also agree that the facts of the present
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case are more in consonance with the judgment of the Madras High Court in
Mohan Goldwater Breweries Pvt. Ltd. (supra), which has been followed by
a learned Single Judge of this Court in the case of Enterprises Pvt. Ltd
(supra), and further in the case of Radico Khaitan Ltd.(supra), wherein, a
Coordinate Bench of this Court has in paragraphs 48 to 50 held as under:-
“48. This Court is of the opinion that the judgment of
the Apex Court in Neon Laboratories Ltd. Vs. Medical
Technologies Ltd. & Ors. (supra) relied upon by
learned counsel for the defendant is inapplicable to the
facts of the present case as the said Apex Court did not
give a final finding on the issue of whether prior use
would have to be anterior to the date of application for
registration and/or prior to the other party’s use. In
fact, it left the issue open. The relevant portion of the
said judgment is reproduced hereinbelow:-
“2. As is to be expected, the assertion in the
plaint is that the Defendant Appellant is
marketing and passing off its products as
that of the Plaintiff-Respondents.
xxxx xxxx xxxx xxxx
9. This Court approved the grant of an
injunction in favour of the prior user.
Additionally, in the recent decision in S. Syed
Mohiden v. P. Sulochana Bai [S Syed
Mohiden v. P. Sulochana Bai,
MANU/SC/0576/2015 (2016) 2 SCC 683:
(2015) 7 Scale 136] this Court has pithily
underscored that the rights in a passing-off
action emanate from common law and not
from statutory provisions, nevertheless the
prior user’s rights will override those of a
subsequent user even though it had been
accorded registration of its trade mark…
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All these considerations will be cast into a
curial cauldron to be appreciated by the
Court before which the suit is being
contested. In these premises, we cannot
conclude that a prima facie case has not
been disclosed by the respondent-plaintiffs.”
xxxx xxxx xxxx xxxx
50. In fact, neither Neon Laboratories Ltd. Vs. Medical
Technologies Ltd. & Ors. (supra) nor S. Syed
Mohidden Vs. P. Sulochana Bai (supra) or L.D.
Malhotra Industries Vs. Ropi Industries (supra) are an
authority for a defence under Section 34 of the Trade
Marks Act, 1999 in an action for infringement of a
registered trade mark.” (emphasis supplied)
49. The facts as noted by us in paragraphs 22 to 27 above, of this
judgment would reveal that the respondent no. 2 had diligently pursued its
application before the Registrar for 17 years. It was finally decided on
29.04.2025, when the opposition of the appellant was eventually dismissed.
It is not a case where upon timely decision on opposition/registration in
favour of respondent no. 2, it remained dormant without using the mark. It is
only a year back that application for registration has been allowed. In any
case, there was no reason for the respondent no. 2 to use the mark, in view
of the stand taken by the appellant in its opposition application, which came
to be decided only in the year 2025. As such, the delay in using the mark by
the respondent no.2 is attributable to delays of the Trademark registry in
processing the application and its pursuing the opposition /registration of the
mark. This cannot be to the prejudice of the respondent no.2, who is
admittedly the prior adopter of the impugned mark.
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50. Mr. Sai Deepak has endeavoured to establish that there is an impasse
in the present matter, as expressed by Kerly in his authoritative disquisition
– Kerly’s Law of Trade Marks and Trade Names. However, we fail to see
how such a situation ensues to the benefit of the appellant. From the relevant
extract of Kerly’s Law of Trade Marks and Trade Names, already
reproduced by us in paragraph 19 above, it is evident that the registered
proprietor of a mark possesses a right to injunction against an infringement
by a party claiming use and goodwill. Such a right arises from registration
itself. What Kerly contemplates is that the registration of the mark cannot
come to the defence of the proprietor of a mark in a passing off claim by the
party claiming use and goodwill. In fact, in Thukral Mechanical Works
(supra) a Coordinate Bench of this Court had examined the doctrinal
paradox of ‘Kerly’s impasse’ in detail, and observed as under:-
“179. We have spent considerable time reflecting on
whether such an injunction, on the ground of infringement,
can be granted even where the infringer has acquired
goodwill by use of the infringing mark. Indisputably, the
right to injunction, in a passing off action, is predicated on
goodwill arising from use, whereas the right to injunction,
following infringement, is a right arising from registration.
This throws, into sharp relief, the oft cited plea that “user
trumps registration” in trade mark matters.
180. Kerly indisputably recognizes, in such a context, the
existing of contrasting rights to obtain injunction; of the
registrant on the basis of registration, and of the owner of
goodwill on the basis of the goodwill earned.
181. Is the law in India different? Does the owner of the
goodwill have, on the basis of the goodwill earned, a right
to block the entitlement of the registrant to obtain an
injunction on the basis of infringement?
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182. Again, indisputably, in our opinion, no such fetter is
put in placed by the statute. The statutory position is, in this
context, the same, under the 1958 TMMA and the 1999
TMA. We, naturally, advert to the former, as the 1958
TMMA is what concerns us.
183. Section 28(1) of the 1958 TMMA confers, to a
registrant of a validly registered trade mark, a right to
obtain relief against infringement, which includes the right
to an injunction. Any use of an identical, or deceptively
similar, trade mark, by a person who has no registration
therefor or other permission to so use the mark, is
infringing, within the meaning of Section 29.
184. Section 28(1) is, however, made subject to the other
provisions of the 1958 TMMA. This would, therefore, make
Section 28(1) subject to Section 27(2) as well as Section 33
(which parallels Section 34 of the 1999 TMA).
185. Section 27(2), undoubtedly, holds that nothing in the
1958 TMMA affects the rights of action against any person
for passing off his goods as those of another, or to obtain an
injunction on that basis. That, however, only saves passing
off actions and the right to obtain injunction in such cases.
It does not derogate from the right conferred in Section
28(1).
186. We may express it otherwise. The injunction that an
owner of goodwill (let us call him X) can obtain against the
registered proprietor of the mark (let us call him Y), by
virtue of Section 27(2) on the ground of passing off, may
affect the right of Y to further use the mark, but cannot
affect the right of Y to obtain relief against infringement, on
the basis of Section 28(1). This is because the right to relief,
in a case of passing off, does not extend to undoing the
registration granted to Y.
187. Once the registration of Y thus remains inviolate, the
right to obtain an injunction against any person who, not
being a registered or permissive user thereof, uses anSignature Not Verified
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identical or deceptively similar mark for identical goods,
flowing from Section 29(1), 28(1) and 106 of the 1958
TMMA, also stand preserved.
188. The TMMA does not envisage goodwill to be a defence
against injunction, where infringement is found to exist.
189. The only protection against injunction, available to X
(the owner of the goodwill), in such a case, is under
Section 33 of the TMMA – corresponding to Section 34 of
the 1999 TMA. It is only in such a case that “user trumps
registration”. User is accorded priority over registration,
therefore, only where the user, by the defendant is prior
both to the user of the mark by the plaintiff as well as the
registration of the mark in the plaintiff’s favour.”
(emphasis supplied)
51. It is apparent from the above that two separate rights to injunction
exist in such a scenario- (i) the right of a proprietor of a registered mark
against a party claiming use, in a matter of infringement, and (ii) the right of
a party claiming use/goodwill against the proprietor of a registered mark in a
matter of passing off. Both these rights prevailed in the facts of the case in
Thukral Mechanical Works (supra). A reading of the judgment would also
make it clear that the only protection against injunction available to a party
claiming goodwill is under Section 34 of the Act, which contemplates that a
user is accorded priority over a registration only when such user by a party
is prior to the user of the mark by the registrant or the registration in its
favour whichever is earlier. It is an undisputed fact that the respondent no. 2
has not yet commenced the manufacturing of products under the impugned
mark. However, having been granted the registration in its favour vide order
dated 29.04.2025, which shall relate back to the date of application by the
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respondent no. 2 for its mark – ’20-20′ i.e. 27.09.2007, the same would still
be prior to the adoption and use, both, by the appellant. Hence, the appellant
would still be unable to defeat the right over the impugned mark in
respondent no. 2’s favour, which has accrued in consequence to its earlier
adoption and application for registration of the impugned mark. As such, the
reliance placed by Mr. Sai Deepak on the said judgment cannot enure to the
benefit of the appellant.
52. It is necessary to note at this point that the judgment in Thukral
Mechanical Works (supra) was taken in appeal in SLP (C) No.9593/2026,
wherein the Supreme Court vide order dated 25.03.2026, has endeavored to
solve the dispute among the parties amicably through mediation and directed
the parties to maintain status quo in the meantime, as existing before the
impugned judgment.
53. Yet another contention of the learned Senior Counsel for the appellant
is that Section 18 of the Act has to be read harmoniously along with Section
11 and Section 34 of the Act. We find that the learned Single Judge had
rightly held that this submission is inconsequential for the reason that there
is no issue of passing off, for Section 11(3) (a) of the Act to apply.
54. The impugned order also notes two other judgments in the cases of
Kabushiki Kaisha Toshiba v. Tosiba Appliances Co., (2008) 10 SCC 766
and Reckitt and Colman Overseas Health Limited (supra). The learned
Single Judge also placed reliance on the judgment of the Bombay High
Court in the case of Drums food international Pvt. Ltd. v. Euro Ice Cream
& Anr. (2011) SCC OnLine Bom 817, which held that when the registration
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of a trade mark is granted, the same must relate back to the date of
application of the mark. It observes that use by any party while its
application is pending, would not grant it any superior rights. The relevant
paragraphs of the same read as under:
“8. The right to have a mark registered is not
dependent upon the actual use of the mark at the time
of registration. Section 18(1) reads :-
“18 Application for registration.- (1) Any
person claiming to be the proprietor of a trade
mark used or proposed to be used by him, who
is desirous of registering it, shall apply in
writing to the Registrar in the prescribed
manner for registration of his trade mark.”
9. To hold that a registered mark does not take
precedence over the use of the mark after the date of
the application for registration would render section
18(1) otiose. The Act encourages proprietors to have
their marks registered. If the plaintiff’s case is upheld,
it would not only be contrary to, but destroy the object
of the Act as it would positively discourage registration
of trade marks.
10. To uphold the plaintiff’s case would cause havoc
and virtually erode the rights of the proprietors of
trademarks. There is always a time-lag between an
application for registration of a mark and the order
registering the same. Applications for registration are
in public domain. They are advertised. If Mr.
Tulzapurkar’s submission is upheld, upon an
application for registration being made and advertised,
it would be possible for any person to use it
immediately, thereby rendering the valuable rights of
the registered proprietor in respect of the mark
nugatory even before the mark is registered. This
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would render an essential and substantial part of the
Act redundant.
xxx xxx xxx
If I am right in the view I have taken, the expression
“date of registration” in section 34(b) must mean the
date of the application for registration for that is the
date to which the registration, when granted, will
relate. A view to the contrary would lead to an
extremely peculiar situation. The date on which a mark
is considered to be registered must be the same for
infringement or for a passing off action. It would
otherwise lead to conflicting orders in actions for
infringement on the one hand and passing off actions
on the other, which could never have been the intention
of the Legislature.”
55. Based on the consideration of the aforesaid judgments, the conclusion
of the learned Single Judge in paragraphs 44 to 47 of the impugned order
becomes relevant. The same reads as under:
“44. Thus, in view of the overwhelming law clearly
laid down in the aforesaid judgments that when two
entities apply for a similar, identical or a deceptively
similar mark, that too on a “proposed to be used”
basis, under the provisions of the Section 18 of the Act,
subsequent use of the marks applied for by one of the
parties would not enure to its benefit in any manner
and such prior use in the eyes of law shall be
inconsequential. Thus, the only firm conclusion in such
circumstances is that the senior adopter would oust the
junior adopter for the purposes of registration under
section 18 of the Act. It is pertinent to extract Section
18 of the Act hereunder:-
18. Application for registration.– (1) Any
person claiming to be the proprietor of a
trade mark used or proposed to be used bySignature Not Verified
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him, who is desirous of registering it, shall
apply in writing to the Registrar in the
prescribed manner for the registration of his
trade mark.
(2) A single application may be made for
registration of a trade mark for different
classes of goods and services and fee
payable therefor shall be in respect of each
such class of goods or services.
(3) Every application under sub-section (1)
shall be filed in the office of the Trade Marks
Registry within whose territorial limits the
principal place of business in India of the
applicant or in the case of joint applicants
the principal place of business in India of the
applicant whose name is first mentioned in
the application as having a place of business
in India, is situate:
Provided that where the applicant or any of
the joint applicants does not carry on
business in India, the application shall be
filed in the office of the Trade Marks
Registry within whose territorial limits the
place mentioned in the address for service in
India as disclosed in the application, is
situate.
(4) Subject to the provisions of this Act, the
Registrar may refuse the application or may
accept it absolutely or subject to such
amendments, modifications, conditions or
limitations, if any, as he may think fit.
(5) In the case of a refusal or conditional
acceptance of an application, the Registrar
shall record in writing the grounds for such
refusal or conditional acceptance and the
materials used by him in arriving at his
decision.
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45. It would be incongruous to assume that as between
two similar marks seeking registration on ‘proposed to
be used’ basis, Section 18 of the Act would envisage
two different situations, one for the applicant who
would wait for the actual registration without using
such mark and, the other, who, in the interregnum
commences use of its mark without waiting for actual
registration. If such situation is acceded to, then
unscrupulous applicants would use such incongruity to
oust the senior adopter/applicant from valid
registration. Provisions of law cannot be read in a
manner so as to defeat the aim of the Section or the Act
itself. This would also be in consonance and
conformity with Section 18 of the Act.
46. Applying the settled propositions, it is clear that the
respondent no.2 had applied for registration of mark
“20-20” on 29.09.2007, while the appellant had
applied on 04.10.2007, thus, undeniably making
respondent no.2 the senior/prior adopter of the said
mark. Consequently, the putting to use of the mark ’20-
20′ by the appellant while manufacturing goods from
the year 2009 would also be rendered inconsequential
in terms of the aforesaid ratio which, in the considered
opinion of this Court, is squarely applicable to the
present case.
47. The law as it stands today, has not been varied or
tinkered with till date commencing from the judgment
of the Madras High Court in Mohan Goldwater
(supra) persuading this Court to disagree with the
contentions raised by the appellant. Merely for the
reason that it has taken 17 long years for the
respondent no.2 to establish its claim for registration
of the mark ’20- 20′ and in the meanwhile appellant
had commenced its manufacture and use of the trade
mark ’20-20′, will not, ipso facto, give any special
benefit or treatment to the appellant and applying
provisions of Section 18 of the Act, it is clear that such
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user will not come in the way of the respondent no.2
getting its mark registered. Clearly, Section 18 of the
Act, does not postulate two different dates of
registration, i.e., one for those who waited till
registration and other for those who commenced
manufacturing in the interregnum while the
application was under consideration.”
56. At this juncture, it is necessary to note the stand taken by the appellant
in its response dated 01.08.2008 to the objection raised on the trade mark
registration vide examination report dated 24.06.2008 wherein the appellant
has stated as under:-
“Reply to the Examination Report:-
“…We are in receipt of the Examination Report
No. U- 2829 dated July 2, 2008 pertaining to the
above noted application.
In reply to the examination report, we submit as
under,
Regarding paragraph 1 (objection under Section
9)
We submit that though the mark applied for,
consists of numerals, it is inherently distinctive for
the reason that the said numerals do not serve in
the trade to designate the kind, quality, quantity,
intended purpose, values, geographical origin or
the time of production of the goods in question. In
the given case, the mark applied for, taken as a
whole, is inherently of a distinctive character, in
as much as, it is capable of distinguishing the
goods in respect of which the applicants are
seeking registration thereof.
Regarding paragraph 2 (objection under Section
11)
We submit that no earlier mark has been cited in
the report. In the absence of any earlier mark
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raised under Section 11(1) is not maintainable.
The mark applied for, is visually, phonetically and
conceptually different from the pending marks
cited in the report. In order to overcome the
objection raised under Section 11 of the Act,
applicants are prepared to restrict the
specification of goods to ‘Biscuits’ only.
In view of the above, you are requested to waive
the objections and accept the application for
advertisement in the Journal…”
57. The learned Single Judge examined the above and held as under:
“49. On a perusal of the aforesaid statements it is
clear that in order to overcome the objections
under Sections 9 and 11 of the Act, the appellant
had clearly stated that the rival marks are
phonetically, visually and conceptually distinct
from one and another and also stated that it
would restrict its applicability of the mark ’20-20′
to Biscuits only. If that is so, it is beyond
comprehension as to how the very same appellant
who obtained registration of mark ’20-20′ in its
favour, is now contending that the mark ’20-20′ of
the respondent no.2 is deceptively similar and
cannot be registered on the ground that (i) the
appellant is a prior user of the mark ’20-20′ and
(ii) the mark of respondent no.2 is identical or
deceptively similar to that of the appellant. This is
a classic case of a party approbating and
reprobating at the same time. This is
impermissible in law. Such a stand was repelled
and rejected by this Court in Radico Khaitan
(supra).”
58. The learned Single Judge observed that it is to overcome the
objections under Section 9 and Section 11 of the Act that the appellant stated
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that the rival marks are phonetically, visually and conceptually distinct from
one and another and also that it would restrict its applicability of the mark
’20-20′ to biscuits only. The learned Single Judge was of the opinion that
thus, the very same appellant, who obtained registration of the mark ’20-20′
in its favour cannot now contend that the mark of ’20-20′ of the respondent
no. 2 is deceptively similar and cannot be registered. As such, in the facts of
the case, the contentions on behalf of the appellant with regard to Section 9,
Section 11 and Section 34 of the Act were rejected. We agree with this
conclusion. The appellant having already taken a stand as stated above in its
response to the examination report dated 24.06.2008, it cannot now be
allowed to claim rights on the same mark ’20-20′ and challenge the
registration granted to the respondent No. 2, on the ground that the marks
are deceptively similar. The attempt of the appellant amounts to approbating
and reprobating its stand, which is impermissible in law. In fact, this can
standalone be a ground to dislodge the appellant from pursuing the action of
passing off. In this regard, we may refer to the judgment of a Coordinate
Bench of this Court in Raman Kwatra and Anr. v. KEI Industries Limited,
2023:DHC:83-DB relevant part of which reads as under:-
“43. We also find merit in the appellant’s contention
that a party, that has obtained the registration of a
trademark on the basis of certain representation and
assertions made before the Trade Marks Registry,
would be disentitled for any equitable relief by
pleading to the contrary. The learned Single Judge had
referred to the decision in the case of Telecare
Networks India Pvt. Ltd. v. Asus Technology Pvt. Ltd.
(supra) holding that after grant of registration neither
the Examination Report nor the plaintiff’s reply would
be relevant. We are unable to agree with the said view.
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In that case, the Court had also reasoned that that
there is no estoppel against statute. Clearly, there is no
cavil with the said proposition; however, the said
principle has no application in the facts of the present
case. A party that has made an assertion that its mark
is dissimilar to a cited mark and obtains a registration
on the basis of that assertion, is not to be entitled to
obtain an interim injunction against the proprietor of
the cited mark, on the ground that the mark is
deceptively similar. It is settled law that a person is not
permitted to approbate and reprobate. A party making
contrary assertions is not entitled to any equitable
relief.”
59. We see no infirmity in the conclusion drawn by the learned Single
Judge. The respondent no.2 having diligently pursued its claim for
registration of the mark ’20- 20′, the appellant commencing its manufacture
and use of the same mark in the interregnum, will not give any special
benefit or treatment to the appellant, and will not usurp the registration of
the respondent no.2.
60. In view of the foregoing discussion, we see no reason to interfere with
the impugned judgment. The appeal is dismissed, along with the pending
applications.
V. KAMESWAR RAO, J
MANMEET PRITAM SINGH ARORA, J
JULY 28, 2026
rt
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