### Seniority of Trademark Adoption on "Proposed to be Used" Basis Prevails Over Intervening Actual User Case Brief: *Parle Products Private Limited v. The Registrar of Trade Marks & Anr.* Facts: 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 (Parle) applied for the identical mark one week later, on October 4, 2007, also on a "proposed to be used" basis. While Respondent No. 2’s application faced a 17-year delay due to Registry errors and subsequent litigation, the Appellant obtained registration in 2017 and commenced extensive commercial use from 2009. When Respondent No. 2’s application was finally advertised, the Appellant opposed it, claiming prior user and "first in the market" rights based on the *Neon Laboratories* (2016) precedent. Issue: Whether a junior adopter of a trademark who commences commercial use in the interregnum can defeat the registration of a senior adopter who applied on a "proposed to be used" basis. Held: The High Court dismissed the appeal and upheld the registration in favour of Respondent No. 2, ruling: 1. Priority of Application (Section 18): Under Section 18 of the Trade Marks Act, proprietary rights are established from the date of application for marks filed on a "proposed to be used" basis. Physical use is not a prerequisite for and does not override the seniority of an earlier application. 2. Inapplicability of "First in Market" to Registration: The "first in the market" test (as per *Neon Laboratories*) pertains primarily to passing-off actions. In registration proceedings between two "proposed to be used" applicants, the senior adopter preserves priority regardless of the junior adopter’s intervening commercial use. 3. No Abandonment: The 17-year delay was attributable to the Registry and judicial processes, not Respondent No. 2’s lack of interest. Vigilant pursuit of an application negates claims of abandonment or non-use. 4. Approbate and Reprobate: The Appellant was barred from claiming "deceptive similarity" because, during the examination of its own mark, it had formally stated that the two marks were "visually, phonetically and conceptually different" to overcome Registry objections. Key Takeaway: In registration disputes between applicants filing on a "proposed to be used" basis, the date of application determines priority. A junior adopter cannot gain a superior right to registration merely by entering the market while the senior adopter's prior application is pending.

The Appellant (Parle) and Respondent No. 2 applied for the trademark "20-20" in Class 30 on a "proposed to be used" basis in 2007.

Respondent No. 2 filed its application on 27.09.2007

while the Appellant filed on 04.10.2007

The Appellant began commercial use in 2008-09 and obtained registration in 2017

Meanwhile, Respondent No. 2’s application faced a 17-year delay due to Registry errors and litigation, including an appeal to the IPAB which eventually directed the mark’s publication in 2020

The Appellant opposed the registration, but the Registrar dismissed the opposition on 29.04.2025, holding Respondent No. 2 to be the senior adopter

The Appellant challenged this order, alleging non-use and abandonment by the Respondent.

1. Whether commercial use of a trademark by a junior adopter during the pendency of a senior adopter's "proposed to be used" application grants the junior adopter priority for registration

2. Whether the Appellant is estopped from challenging the Respondent’s mark after previously stating to the Registry that the marks were distinct to overcome examination objections

3. Whether the "first in the market" test from Neon Laboratories applies to registration proceedings where no commercial use has commenced by the senior adopter

The Court primarily applied Section 18 of the Trade Marks Act, 1999, which allows registration based on a "proposed to be used" basis, establishing that physical use is not a prerequisite for proprietary rights

It relied on the principle from Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries, which holds that for registration purposes, rights are determined as of the date of application, and subsequent use by a rival does not defeat a prior applicant's rights

The Court further distinguished Neon Laboratories Ltd. v. Medical Technologies Ltd., noting it pertains to passing off actions and not to the statutory priority of registration under Section 18

The doctrine of "approbate and reprobate" was applied to prevent a party from taking inconsistent stands before the Registry

The Court reasoned that since both parties applied on a "proposed to be used" basis, Respondent No. 2—having filed one week earlier—is the senior adopter

Under Section 18, the date of application is the "deemed date of registration" once granted; thus, the Appellant’s intervening use since 2009 is "inconsequential" to the statutory priority established in 2007

The Court found that Respondent No. 2 was "vigilant" and "consistent" in pursuing its application despite a 17-year administrative delay, negating any claim of abandonment

Furthermore, the Court highlighted the Appellant’s 2008 reply to the Registry’s Examination Report, where the Appellant specifically restricted its goods to "Biscuits" and claimed the marks were "visually, phonetically and conceptually different" to avoid a Section 11 conflict with Respondent No. 2's pending mark

Consequently, the Appellant was legally barred from now asserting that the marks are deceptively similar

It held that in "proposed to be used" applications, the "first to file" (senior adopter) has priority over a junior adopter, regardless of the junior adopter’s intervening commercial use

The Court concluded that the Appellant could not benefit from its own intervening use when it had prior knowledge of the Respondent’s senior application

The registration of the mark "20-20" in favour of Respondent No. 2 was affirmed