In cases for the infringement of Trade Mark and in cases of passing off, user of trademark plays very important role in establishing proprietary right over the trademark.

Section 31 of the he Trade Marks Act 1999 provides that Trade Marks Registration is prima facie evidence of its validity. Mere production of Registration Certificate was sufficient in cases pertaining to infringement of Trade Mark. The relevant provision of Trade Marks Act 1999 is being reproduced as here in below:

31 Registration To Be Prima Facie Evidence Of Validity:

1. In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

The Hon'ble Supreme Court of India has also retuned strong presumption in favour of Trade Marks Registration. In 1986 AIR 137 titled as American Home Products Vs Mac Laboratories Private Limited, the Hon'ble Supreme Court of India has returned the finding that in cases of Infringement of Trademark, only Trade Marks Registration is sufficient to obtain the relief of injunction. The relevant para of said Judgment is reproduced as under:

When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered ant if there any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by action for infringement in which he can obtain injunction, damages or an account of profits made by other person. In such an action the registration of a trade mark is prima facie evidence on its validity.

There by the Hon'ble Supreme Court of India observed that in cases of infringement of Trade Mark, mere Trade Mark Registration is sufficient and the registered proprietor can obtain injunction. Much weight age was given to the registration certificate. Mere production of registration certificate was sufficient and the registered proprietor was not required to produce any other document, except producing the Trade Mark registration Certificate. Once the offending trade mark is found to be similar to the registered trade mark, then the registered proprietor was not require to produce any other document.

Gradually the law is changing its colour and various courts passed Judgments giving much more emphasis on the user of a trademark. In 2011 (45) PTC 553 (Del), Sancheti Appliances Pvt. Ltd. Vs M/S J.K. Electrical Industries Judgment, the Hon'ble High Court of Delhi has retuned such finding as under

However, the Trademarks Act, 1999, has woven an exception to this rule, which is that if there is a prior user, of the same or similar mark, his action or defence can defeat the registered trademark proprietor's rights.

The Hon'ble Supreme Court of India , in a recent Judgment 2015 (64) PTC 225 (SC), Neon Laboratories Versus Medical Technologies Ltd, has given much more emphasis on the prior user of trade mark, vis-a-vis the registered proprietor of a trade mark. In (2004) 12 SCC 624, Milmet Oftho Industries v. Allergan Inc the Hon'ble Supreme Court of India has returned the finding that the true test is that who is first in the World Market. The right of prior user was also held to be superior in case of (1996) 5 SCC 714, N.R. Dongre v. Whirlpool Corporation. In (2015) 7 Scale 136 Innovolt Inc. Vs. Kevin Power Solutions Ltd, the Hon'ble Supreme Court of India observed that the right of prior user prevails upon the subsequent registered proprietor of a trade mark.

User of Trade Mark is playing very important role. There are plethora of Judgments where various Courts has returned the finding the even registered Trade Marks dies of non user. If a party obtains registration but does not user the Trade Mark, then non user of registered Trade Mark dilutes the right Registered Proprietor.

In such circumstances, various parties tries to create sham user by various ways. There has been tendency by parties to create the user of Trade Mark by any means. Normally for proving the user of a Trade Mark, bills, Invoices, Advertisement in News Papers, Magazines, TV Advertisement etc. are considered to be credible evidence of user. Use in calendar is also easy mode to create sham defence of user. Here is one Order of Hon'ble High Court of Delhi, where finding is that user in Calendar does not prove the actual user of Trade Mark.

Hon'ble Justice Shri Vipin Sanghi, High Court of Delhi , vide order dated 24.07.2013, passed in Suit bearing CS(OS) 2426/2009 , titled as M/s Kiwi Foods (India) Pvt. Ltd Vs M/s Dugar Spices and Eatables Pvt. Ltd. , returned the finding that user of Trade Mark in a Calendar does not prove user of a trademark. Here are the brief introduction of facts of the said case and then the relevant laws laid down by the Hon'ble High Court of Delhi in the said order, regarding user of Trade Mark on Calendar.

In this case, plaintiff claimed that the same is engaged in the business of manufacturing and marketing of confectionary, snacks and namkeens and other related goods. The plaintiff asserted that it adopted the mark FUN POP since April 2005 and has also been using FUN STAR and FUN RINGS. In case the plaintiff applied for registration of FUN POP on 08.04.2005 and for FUN STAR on 12.11.2007. FUN RINGS is applied for on 6.10.2008. The case was pertaining to passing off action as the plaintiff's Trade Marks Applications were not registered at that point of time. However the plaintiff has put on record documents showing user of the subject matter Trade Mark since the year 2008.

The defendants alleged that the same is using the Trade Mark FUN RINGS since the year 2006. In support of alleged user since the year 2006, the defendant has placed on record the calendar stated to have been circulated by it in the year 2006 and 2007. In these calendars apart from other products, the product FUN RINGS has also been displayed.

However the defendant filed the bills/Invoices only since the year 2009. The Hon'ble High Court of Delhi returned the finding that Mere use of the picture of FUN RINGS on the calendar of the year 2006 does not establish the actual user of the said mark on the product by the defendant. Therefore, the plaintiff is entitled to protection in respect of FUN RINGS.

Accordingly in the afore mentioned case, the Hon'ble High Court of Delhi was pleased to grant injunction in favor of the Plaintiff and against the Defendant. The said order has not been challenged by the Defendant in this case, hence the said order has become a biding precedent.

It is submitted that the Hon'ble High Court of Delhi disapproved the user of Trade Mark by the Defendant in the Calendar as the same is self serving document. If user of the Trade Mark in Calendar be approved by the Court , then any party can create the sham user. Reason is that Calendar is a self serving document and can be created/printed by the party. This is the reason, why the Hon'ble High Court of Delhi returned the finding that user of Trade Mark on Calendar does not establish the actual user of the Trade Mark.

Similarly Brochure, Price List, Pamphlets , Catalogue etc. also fall in same category of document, Calendar falls. All these documents are self serving documents and party can create itself and can put any year on these documents. All these documents do not relate to actual commercial user of the trademark. Unlike the bills/Advertisement in New Paper, Documents pertaining to Government Organization etc. do relate to actual user of trade mark.

It is submitted that in this document this factor must have been in the mind of Hon'ble Court that those documents, which actually relates to commercial user of a trade mark, should be considered as user of a trademark. While the documents, which actually do not correspond to actual commercial user of trade mark, should not be considered as user of trademark.

Written By: Ajay Amitabh Suman, Advocate