Prior Applicancy Prevails Over Subsequent User Status for Registration Under Section 18

The Respondent No. 2 applied for the trademark ‘20-20’ in Class 30 on September 27, 2007, on a ‘proposed to be used’ basis.

The Appellant filed a similar application on October 4, 2007.

While Respondent No. 2's application faced decade-long administrative delays and litigation (W.P.(C) 1547/2016), the Appellant commenced commercial use of the mark in 2007-2008 and obtained registration for '20-20' and related marks.

Upon publication of Respondent No. 2’s mark in 2020, the Appellant filed an opposition (No. 1075195), which was dismissed by the Registrar on April 29, 2025.

A Single Judge of the Delhi High Court dismissed the subsequent appeal, holding that Respondent No. 2 was the prior applicant.

1. Whether the "first in the market" test (prior user) prevails over the "prior applicant" rule in registration proceedings when both applications were filed on a ‘proposed to be used’ basis.

2. Whether a party that has asserted dissimilarity between marks during its own registration process is estopped from later claiming deceptive similarity to oppose a senior applicant.

Section 18 of the Trade Marks Act, 1999, which allows registration based on a "proposed to be used" basis, establishing that proprietary rights can be claimed via a bona fide intention to use.

Under Section 23, once a mark is registered, it relates back to the date of the application.

the rights of parties in registration are determined as of the date of the application (Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. [1977 IPLR 83]).

The doctrine of "approbate and reprobate" as discussed in Raman Kwatra v. KEI Industries Ltd. [2023:DHC:83-DB], preventing a party from making contradictory factual assertions to obtain legal relief.

The Court reasoned that in registration disputes between two "proposed to be used" applicants, the "senior adopter" (prior applicant) holds precedence over a "junior adopter" who commences use during the pendency of the senior's application.

The Court distinguished Neon Laboratories Ltd. v. Medical Technologies Ltd. [2016 2 SCC 672], noting its ratio applies to common law passing off actions rather than statutory priority in registration.

The Court observed that Respondent No. 2’s non-use was due to the Registry's administrative delays and the Appellant's opposition, rather than abandonment.

The Court found the Appellant had previously told the Registry in 2008 that ‘20-20’ was "visually, phonetically and conceptually different" from Respondent No. 2’s cited mark to secure its own registration; thus, it could not now argue "deceptive similarity" to block Respondent No. 2.

The Court concluded that the Appellant is legally estopped from claiming deceptive similarity after previously asserting the contrary to the Registry.

The Court dismissed the appeal, affirming the Single Judge's decision.