Parle Products Relied on Prior Market Use of ‘20-20’; Delhi High Court Holds Earlier Trademark Applicant Entitled to Registration Despite Subsequent Commercial Use
Facts
Parle Products Pvt. Ltd. challenged the registration of the trademark “20-20” in favour of another applicant before the Delhi High Court. Although the respondent had filed its trademark application on 27 September 2007 on a “proposed to be used” basis, Parle filed its own application only a week later on 4 October 2007. Parle subsequently launched biscuits and other food products under the “20-20”, “TWENTY-20” and “T20” marks and secured registrations for those marks. When the respondent’s application was eventually advertised after prolonged proceedings before the Trade Marks Registry, Parle opposed the registration, asserting that it had become the prior commercial user and had acquired substantial goodwill in the mark.
The Registrar of Trade Marks dismissed Parle’s opposition and permitted registration of the respondent’s mark. A Single Judge of the Delhi High Court affirmed that decision. Parle thereafter filed the present Letters Patent Appeal, contending that the respondent had never commercially used the mark and that actual market use should prevail over an earlier application filed merely on a proposed-to-be-used basis.
Issues
- Whether an earlier trademark application filed on a “proposed to be used” basis prevails over a later applicant who subsequently becomes the first commercial user.
- Whether the doctrine of prior use under Section 34 of the Trade Marks Act applied to opposition proceedings concerning registration.
- Whether the Supreme Court’s decision in Neon Laboratories Ltd. v. Medical Technologies Ltd. governed the present dispute.
- Whether the Registrar and the Single Judge correctly upheld the respondent’s registration of the “20-20” trademark.
Petitioner’s Arguments
Parle argued that trademark rights fundamentally arise from actual commercial use rather than the mere filing of an application. Although the respondent had filed its application a few days earlier, it had never introduced products bearing the “20-20” mark into the market, whereas Parle had continuously used the mark since 2007–08, invested heavily in advertising, and acquired considerable goodwill and consumer recognition. According to Parle, permitting registration of an unused mark would encourage trademark squatting and undermine the statutory protection afforded to prior users.
Parle further relied heavily upon Section 34 of the Trade Marks Act and the Supreme Court’s decision in Neon Laboratories Ltd., contending that the “first in the market” principle overrides registration priority. It also argued that the respondent’s continued non-use rendered its registration vulnerable under Section 47 and that the Registrar’s order was non-speaking and failed to examine the appellant’s extensive commercial use and goodwill.
Respondent’s Arguments
The respondent contended that it was the earliest adopter and applicant of the “20-20” mark, having applied for registration on 27 September 2007 after conducting searches and deciding to adopt the mark. The subsequent delay in registration resulted entirely from prolonged proceedings before the Trade Marks Registry and not from any lack of diligence on its part. The respondent emphasized that it had continuously pursued its application for nearly seventeen years before ultimately securing registration.
It was further argued that Parle admittedly had no commercial use of the mark prior to the respondent’s application date. Therefore, Parle’s subsequent use could not defeat the respondent’s earlier statutory rights acquired through its prior application. The respondent also distinguished Neon Laboratories, submitting that the judgment dealt with passing-off actions rather than disputes relating to registration of trademarks.
Analysis of the Law
The High Court examined the interplay between Sections 11, 18, 28, 34 and 47 of the Trade Marks Act, 1999. It observed that Section 18 expressly permits registration applications for trademarks proposed to be used in the future, thereby recognising proprietary rights based upon a bona fide intention to use. Accordingly, actual commercial use is not an indispensable precondition for maintaining an application for registration.
The Court distinguished between registration proceedings and passing-off actions. While Section 34 preserves the rights of a genuine prior user in appropriate cases, the present dispute concerned the validity of registration where both parties had initially applied on a proposed-to-be-used basis. The Court held that the statutory framework governing registration could not be displaced merely because one applicant commenced commercial use during the pendency of another’s earlier application.
Precedent Analysis
- Neon Laboratories Ltd. v. Medical Technologies Ltd. – Distinguished as a passing-off dispute involving prior user against a registered proprietor and held inapplicable to the present registration proceedings.
- Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. – Relied upon to hold that rights in registration proceedings are ordinarily determined with reference to the date of the trademark application.
- Radico Khaitan Ltd. v. Devans Modern Breweries Ltd. – Followed for the principle that Neon Laboratories does not govern infringement or registration disputes under Section 34.
- Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd. – Relied upon in reaffirming that an earlier trademark application filed with a bona fide intention to use enjoys priority in registration proceedings.
Court’s Reasoning
The Division Bench agreed with the Single Judge that Neon Laboratories was factually and legally distinguishable. That decision arose from a passing-off action where a registered proprietor had failed to use its mark for many years while another trader had built substantial goodwill in the market. In contrast, the present dispute arose purely out of opposition to trademark registration. The respondent had consistently pursued its application before the Trade Marks Registry, and the delay in registration resulted largely from administrative proceedings rather than abandonment or indifference.
The Court further held that both parties had originally applied for registration on a “proposed to be used” basis. Since the respondent’s application preceded Parle’s by several days, the subsequent commercial use by Parle during the pendency of the respondent’s application could not defeat the respondent’s earlier statutory claim. Accepting Parle’s contention would permit later applicants to obtain superior rights merely by commencing commercial use while an earlier application remained pending before the Registry.
The Bench also found that the respondent had diligently prosecuted its application for over seventeen years, including pursuing remedies before the High Court and the Intellectual Property Appellate Board after the Registry failed to communicate its refusal order. The Court therefore rejected the contention that the respondent had abandoned the mark or was guilty of trademark squatting. Since the Registrar and the Single Judge had correctly applied the statutory scheme governing registration, no ground for appellate interference was made out.
Conclusion
The Delhi High Court dismissed Parle Products’ appeal and upheld the registration of the respondent’s “20-20” trademark. It held that, in registration proceedings, an earlier application filed with a bona fide intention to use cannot ordinarily be defeated merely because a subsequent applicant commenced commercial use during the pendency of that earlier application. The Court clarified that the principles governing prior user in passing-off actions do not automatically apply to opposition proceedings concerning trademark registration.
Case Details
- Case: Parle Products Pvt. Ltd. v. The Registrar of Trade Marks & Anr.
- Court: Delhi High Court (Division Bench)
- Case Number: LPA 316/2026
- Judges: Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora
- Date: 28 July 2026
- Result: Appeal dismissed; registration of the respondent’s “20-20” trademark upheld.
