Delhi High Court Upholds Trademark Priority Favoring Earlier Application Over Subsequent Commercial Use By Parle

The Delhi High Court has dismissed an appeal filed by Parle Products Pvt. Ltd., cementing a significant legal precedent regarding trademark registration priority. A division bench comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora held that in disputes over trademark registration, an earlier filing date takes precedence, even if an opponent has established commercial use and goodwill in the interim.

Case Background

The dispute centers on the "20-20" trademark for Class 30 goods (biscuits and confectionary). The respondent, a rival biscuit manufacturer, had filed an application for the mark on September 27, 2007, while Parle filed its application on October 4, 2007. Although the respondent's application faced years of administrative delays at the office of the Registrar of Trade Marks, it was eventually revived by the Intellectual Property Appellate Board in 2019. Parle’s opposition to the registration was rejected by the Registrar in April 2025, a decision that was later affirmed by a single judge, leading to the current appeal before the division bench.

Arguments Presented

Parle contended that under Section 34 of the Trade Marks Act, 1999, the "first in the market" test should apply. The company argued that its continuous commercial use of "20-20" since 2007-2008 allowed it to acquire superior common law rights and goodwill that should override the respondent's dormant application. Relying on the landmark Neon Laboratories Ltd. v. Medical Technologies Ltd. , Parle argued that statutory registration rights should not defeat established market presence.

Conversely, the respondent argued that as the senior applicant, its rights solidified from the date of filing. It alleged that Parle’s use was secondary and that Parle could not unilaterally claim ownership since, at the time of Parle's adoption, the respondent's application was already in the public domain.

Legal Analysis

The Court distinguished the present case from Neon Laboratories Ltd. , noting that the judgment in that matter was specific to a passing-off action involving an interim injunction, not an appeal against the registration of a trademark. The bench underscored that the principles of registration remain anchored in the "date of application."

Furthermore, the Court found that Parle had engaged in "approbate and reprobate" behavior. During its own registration process, Parle had informed the Registrar that its mark was "visually, phonetically, and conceptually" distinct from cited marks, including the respondent's "20-20." The Court ruled that having secured its own registration through such assertions, Parle could not now argue the marks were deceptively similar to block the respondent.

Key Observations

The judgment emphasizes the statutory integrity of the trademark registration process:

  • "The right to have a mark registered is not dependent upon the actual use of the mark at the time of registration."
  • "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."
  • "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."

Court's Decision

The division bench dismissed the appeal, holding that Parle’s subsequent commercial use was insufficient to usurp the respondent's priority as the senior applicant. The ruling confirms that administrative delays in the registry do not prejudice an applicant's priority rights. This decision reinforces the importance of the application filing date as the primary determinative factor in trademark ownership disputes, warning litigants against taking contradictory stances before the registry to achieve equitable relief.