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Introduction

Trademark law often grapples with the tension between formal registration procedures and the realities of market use. The case of Parle Products Private Limited v. The Registrar of Trade Marks & Anr. (C.A.(COMM.IPD-TM) 49/2025) is a striking example of this conflict. At its heart was the question of whether the first applicant for a trademark on a “proposed to be used” basis should enjoy priority over another party who, though filing later, actually entered the market first and built goodwill. The Delhi High Court’s decision in this matter provides clarity on how Indian trademark law treats seniority of applications, the role of market use, and the limits of doctrines such as abandonment and prior user protection.

Facts of the Case

The dispute began in September 2007 when a company filed an application for the trademark “20-20” in Class 30, covering biscuits and confectionery, on a proposed to be used basis. Just a week later, on October 4, 2007, Parle Products also filed an application for the same mark, likewise on a proposed to be used basis. Unlike the earlier applicant, Parle went on to launch its biscuits under the “20-20” brand between 2007 and 2008, establishing continuous use from 2008–09 onwards. Over time, Parle expanded its product line under the mark and built significant goodwill in the market.

In 2017, Parle received registration certificates for “20-20”, “TWENTY-20”, and “T20”. Meanwhile, the earlier applicant’s trademark application faced extraordinary delays. For nearly seventeen years, the matter was caught in administrative errors, writ petitions, and appeals before the Intellectual Property Appellate Board. Eventually, the mark was published in 2020. Parle opposed the application, arguing that its own use and registration should prevail. However, on April 29, 2025, the Registrar of Trade Marks dismissed Parle’s opposition, reasoning that the earlier applicant was the senior adopter by virtue of filing first.

Parle then filed an appeal before the Delhi High Court under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s order.

Arguments in favour

Parle’s central contention was that the Registrar had erred in focusing solely on the filing date. They argued that trademark law is meant to protect actual use and the goodwill generated in the market, not dormant applications. According to Parle, the “first in the market” test should apply, meaning that the party who actually introduced goods into the market first should enjoy superior rights. Since Parle had launched its products in 2008–09 and had continuously used the mark since then, it claimed protection as the prior user.

Parle also invoked Section 47 of the Trade Marks Act, which allows removal of a registered mark if it has not been used for five years and three months. They argued that the earlier applicant’s prolonged non-use amounted to abandonment. In their view, trademark rights are not preserved in perpetuity merely by filing an application; they must be exercised through actual use.

In addition, Parle relied on Section 34, which protects prior users from interference by registered proprietors. This provision states that nothing in the Act entitles a registered proprietor to restrain the use of a mark by someone who has continuously used it from a date prior to the registrant’s use or registration. Parle argued that a senior adopter who never used the mark should not be able to displace an established user who had built goodwill.

To strengthen their case, Parle cited several precedents. In Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, the Supreme Court held that prior user rights override dormant registrations. The Court emphasized the importance of the “first in the market” test, protecting the party who actually introduced goods into the market. Parle also referred to N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714, where worldwide prior user rights were given preference over an Indian registrant, and Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, which similarly favored prior user rights even in the absence of Indian registration. In S. Syed Mohiden v. P. Sulochana Bai, (2016) 2 SCC 683, the Court underscored that prior user rights prevail even against registered marks. Finally, Parle relied on Intex Technologies v. AZ Tech, 2017 (70) PTC 118 (Del), which recognized the “first in use” doctrine as a valid principle in trademark disputes.

Parle’s argument was essentially that trademark law protects commercial reality and goodwill, not dormant filings. They contended that allowing the earlier applicant to prevail would undermine the very purpose of trademarks, which is to identify goods in the market and protect consumers from confusion.

Arguments Against

The opposing company countered that under Section 18 of the Trade Marks Act, the date of application is decisive when both parties file on a proposed to be used basis. Since they filed first, they were entitled to priority. They argued that the law clearly provides that the person who applies first is entitled to registration, and subsequent use by another party cannot defeat this priority.

They further argued that they had diligently pursued their application for seventeen years and should not be penalized for delays caused by the Registry. In their view, administrative delays should not deprive them of their legal rights as the senior adopter.

The opposing company also invoked the doctrine of approbate and reprobate. They pointed out that in 2008 Parle had told the Registry that its mark was “visually, phonetically and conceptually different” from theirs in order to overcome an examination objection. They argued that Parle could not now claim the marks were deceptively similar. This change of stance, they contended, was impermissible in law.

Finally, they argued that Section 11(3), which deals with passing off, was inapplicable because they had not commenced manufacturing. Since passing off requires actual market presence and misrepresentation, they claimed that the ratio in Neon Laboratories did not apply to this case.

Court’s Decision 

The Delhi High Court dismissed Parle’s appeal and upheld the Registrar’s order. The Court held that under Section 18, when applications are filed on a proposed to be used basis, the senior adopter, meaning the first applicant, has priority. Any subsequent use by a junior applicant during the pendency of the senior application is inconsequential and undertaken at the applicant’s own risk.

The Court also referred to Section 23, which provides that registration relates back to the date of application. Thus, the earlier applicant’s rights dated back to 2007. Section 34, which protects prior users, was clarified as being relevant in passing off actions, but not in registration disputes under Section 18. Section 47, which allows removal of marks for non-use, was held to apply only after registration, not during the pendency of an application.

In distinguishing Neon Laboratories, the Court explained that the “first in the market” test applies to passing off suits, not to registration priority disputes. The Court relied on Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd., (1977) IPLR Vol. I 83, which established that rights are determined by the date of application and subsequent use cannot defeat a prior application. It also cited Radico Khaitan Ltd. v. Devans Modern Breweries Ltd., 2019:DHC:1423, to reject inconsistent legal positions and distinguish Neon Laboratories. Furthermore, the Court followed Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd., MANU/DE/6941/2024, which affirmed that actual use is not necessary for proprietary rights under Section 18.

The Court also applied the doctrine of approbate and reprobate, holding that Parle’s change of stance from claiming the marks were distinct in 2008 to claiming they were confusingly similar now was impermissible in law.

Conclusion

The Delhi High Court concluded that the earlier applicant, as the senior adopter and first applicant, had a preferential right to registration under Section 18 of the Trade Marks Act. Parle’s extensive market use and prior registration certificates could not override the legal priority established by the earlier filing date. The appeal was therefore dismissed without costs.

This case illustrates the distinction between registration disputes and passing off actions. While prior user rights are paramount in passing off cases, registration disputes under Section 18 are governed strictly by the filing date. The decision underscores the importance of timely filing and the risks faced by parties who enter the market while a senior application is pending. It also highlights the limits of doctrines such as abandonment and prior user protection in the context of registration priority. For businesses, the lesson is clear: filing early is crucial, and market use alone cannot displace the rights of a senior applicant in registration proceedings.