Section 34 of TradeMark Act, 1999 is entitled “Saving for vested rights.” In simple terms, it means that a person who has been using a trademark in good faith before someone else registers the same (or a similar) mark is allowed to continue using it. In the words of the law, “Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it” if that person (or their predecessor) has “continuously used that trade mark from a date prior” to the other party’s first use or registration. In short, Section 34 “saves” the rights of an earlier (prior) user. It ensures that a later-registered owner cannot simply shut down someone who honestly and continuously used the mark first.
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The ‘Prior Use’ Doctrine in Trademark Law
The core legal principle behind Section 34 of TradeMark Act is that of prior use. In trademark law, a party who first adopts and uses a mark in commerce (in good faith) typically acquires rights to it. Section 34 of TradeMark Act formalizes this by protecting that first user against later registrations. As one commentator explains, even an unregistered business that has used a mark continuously for years “enjoys common law protection” and its rights are “not superseded by a subsequent registration”. This means that the person who introduced the mark and built goodwill with it has a legally cognizable interest.
For example, in Amritdhara Pharmacy v. Satyadeo Gupta (1963), the Supreme Court held that the right to a trademark “arises from its use, and not merely from registration.”. Similarly, in S. Syed Mohideen v. P. Sulochana Bai (2016), the Court reaffirmed that “trademark registration does not confer an absolute monopoly, especially if another party has been using it prior to registration.”. The Act’s scheme ensures that if two parties have identical or similar marks, the one who used it first (in relation to particular goods/services) has rights superior to the later registrant. Put simply, under Section 34 the Act gives effect to the old adage “first in time, first in right” (subject to good faith).
Section 34 of TradeMark Act as a Defense in Infringement Cases
Section 34 of TradeMark Act is often invoked as a defense in trademark infringement actions. If a registered owner sues someone under Section 29 (infringement) or under common-law passing off, the defendant can plead that they fall under Section 34’s protection. The defense argues: “I (or my predecessor) used this mark continuously since before you first used or registered it, so you cannot stop me.” Courts have repeatedly agreed that “the rights conferred by registration are subject to the rights of the prior user”. In other words, registration alone does not automatically shut down earlier users. As one judgment explains, “the plain reading of the whole scheme of the Act recognises the rights of the prior user as superior to those of the registered user of the trade mark.”.
Likewise, Section 34 of TradeMark Act operates at the registration stage. If a person applies to register a mark, and an existing registrant opposes on the basis of the registrant’s mark, a prior user can step in and prove their earlier use. The Act even instructs the Registrar of Trademarks that upon proof of prior use, the Registrar “shall not refuse” to register the later mark just because the first mark was already registered. Essentially, Section 34 of TradeMark Act blocks a registered owner from securing exclusive rights to the prejudice of an honest prior user.
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Practical Scenarios and Case Law
Given below are practical scenarios and case law illustrations related to Section 34 of the Trade Marks Act, 1999, which prioritizes prior use over registered trademarks in India, protecting a prior user's rights against a later registrant.
1. Earlier User vs. Later Registrant
One classic scenario is two traders independently using the same or similar mark on related goods. If Trader A began using Mark X in 2010 on, say, clothing, and Trader B registered Mark X in 2015 for similar clothing, Section 34 of TradeMark Act would protect Trader A’s prior use. Indeed, in S. Syed Mohideen v. P. Sulochana Bai the plaintiff’s family had used “Iruttu Kadai Halwa” since 1900, long before the defendant registered a similar mark. The Supreme Court held that the prior user’s rights (and passing-off remedy) trumped the later registrant. The Court stressed that “the scheme of the Act is such that the rights of prior user are recognized as superior to those of the registration”, and the registered owner “cannot disturb/interfere with the rights of the prior user.”
2. First-User Rule Reinforced
In Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016), the Supreme Court echoed this principle. It noted that “a proprietor of a trademark 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.”. This case explicitly held that Section 34 protects the prior user even against the registered proprietor.
3. Territorial Use Requirement
Notably, Section 34 of TradeMark Act applies only to use within India. Courts have made clear that foreign use alone does not trigger Section 34. In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018), the Japanese Toyota company tried to assert trademark rights in India for “Prius” based on its global reputation. The Supreme Court held that Toyota had never sold cars (or established goodwill) under “Prius” in India before the defendants began using the name for auto parts. Thus Toyota could not claim prior user rights here. In simple terms, “the use of trademark in foreign countries under foreign registration can be ‘use’ within the meaning of the Act,” and Indian goodwill must be shown. A Lexology commentary summarizes: “Use” in Section 34 of TradeMark Act refers to use within India, and prior use abroad is no defense unless that foreign reputation spills over into India.
4. Registrar Must Accept Second Mark
In practice, a prior user can even overcome an opposition at the Registrar. For example, if Company A registered “STARLAB” in 2018, and in 2022 Company B applied to register “STARLAB” but A opposed, B could invoke Section 34 by proving it used STARLAB before 2018. The Registrar would be obliged to allow B’s registration despite A’s mark. Courts have recognized this aspect, noting that Section 34 of TradeMark Act not only defends against injunctions but also ensures the Registrar “shall not refuse (on such use being proved)” a later mark just because an earlier one exists.
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Limitations and Conditions for Invoking Section 34
Section 34 of the Trade Marks Act, 1999, safeguards prior users of a trademark against later registrants, but its invocation is subject to specific conditions and limitations. Below are the key requirements and constraints for relying on this provision.
Continuous, Good-Faith Use
The claimant must have used the mark continuously in India since a date earlier than the other party’s first use or registration. Courts require this use to be bona fide (not deceitful). As one court explained, the prior user’s business must be “in continuous use” of the mark for the relevant goods. Moreover, usage must be “in good faith, without attempting to capitalize on [the plaintiff’s] established reputation or goodwill.” In other words, one cannot, for example, adopt another’s mark merely to trade on their fame and then claim Section 34 of TradeMark Act.
Same or Similar Goods/Services
The earlier use must be on the same (or closely related) goods or services for which the later mark is registered. Section 34 refers to use “in relation to goods or services” overlapping with those of the registered mark. If the prior use is in a completely different field, Section 34 of TradeMark Act likely won’t apply.
Evidence of Use
Simply claiming an earlier date is not enough. The burden is on the claimant to prove actual use. Courts look for concrete evidence like sales records, advertisements, invoices or trade inquiries over the years. For example, in Amaravathi Enterprises v. Karaikudi Chettinadu (Madras DB, 2008) the court held that a defendant using prior user as a shield must show “continuous use” of the mark in relation to the goods. In Pioneer Nuts & Bolts v. Goodwill (Delhi 2009), the court pointed out that mere newspaper ads or occasional trade enquiries “can hardly constitute proof” of actual use. In practice, evidence of steady sales and promotion is key.
Territorial Scope
Section 34 of TradeMark Act only covers use in India. Use of the mark only outside India does not count. The Act’s operation is confined to the country, so foreign sales or reputation alone do not create a Section 34 defense (absent significant goodwill spilling into India).
Predecessor in Title
Section 34 of TradeMark Act also protects successors in business. If a person acquires a business (with goodwill and trademark use) from an earlier owner, they can invoke Section 34 as a “predecessor-in-title.” The statute explicitly mentions rights of prior user or “predecessor in title”.
No Double Protection
Lastly, Section 34 is a defense, not a way to gain extra rights. It does not, for example, let a prior user extend its rights beyond what it was already doing. It simply prevents the registered owner from claiming exclusivity over the prior user’s established domain.
Summary
In summary, Section 34 of TradeMark Act safeguards honest first users of trademarks. It upholds the principle that trademark rights flow from actual use and reputation. By providing a statutory “saving for vested rights,” it ensures that a later-registered owner cannot unfairly override someone who built the mark’s goodwill earlier. This promotes fairness: businesses cannot lose the value they’ve created simply because another got to the registry office first.
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Section 34 of Trademark Act: FAQs
Q1. What is class 34 in trademark?
Class 34 covers tobacco products, smoking articles and matches under the Nice Classification for trademarks.
Q2. What is the rule 34 of trademark rules?
Rule 34 allows trademark applicants to request an expedited examination process for faster registration in India.
Q3. What is Section 34 of the TMA?
Section 34 protects a prior user’s right to use a trademark in India over a later registered trademark.
Q4. What is Section 33 of the Trademark Act?
Section 33 allows a registered trademark owner to defend their mark if used in good faith against a similar mark.
Q5. What is class 34 nice classification?
Class 34 in the Nice Classification includes tobacco, smokers’ articles, and matches for trademark registration.
