Delhi High Court ruled that prior use prevails over later trademark registration, affirming protection under Trade Marks Act, 1999, for brand ARUN through evidence of long usage, advertising, sales, litigation history, secondary meaning, and acquired distinctiveness.
NEW DELHI: The High Court of Delhi held that prior use prevails over subsequent registration. The petitioner’s long usage, advertisements, court actions, and sales figures established that “ARUN” had acquired secondary meaning and distinctiveness.
The High Court reinforced the protection accorded to prior users and registered proprietors under the Trade Marks Act, 1999.
The Single judge bench of Justice Tushar Rao Gedela examined whether the trademark “AiC ARUN” registered by Alka Industrial Corporation infringed upon the long-standing trademark “ARUN” owned by Satya Paul. Applying established principles of trademark law, the Court held that “ARUN” was the dominant and essential feature of both marks and directed rectification of the Trade Marks Register.
This decision reaffirms the doctrine of prior use, the test of deceptive similarity, and the scope of rectification proceedings under Sections 47 and 57 of the Act.
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Facts of the Case
The petitioner, Satya Paul, is engaged in the manufacture and sale of sewing machines and their parts. The trademark “ARUN” was adopted by its predecessor in 1962 and has been in continuous use since then.
Key registrations of the petitioner include:
- Registration in Class 7 (1976 and 1984)
- Registration in Class 20 (2001)
- Copyright registration of artistic label (1999)
The petitioner claimed uninterrupted use, extensive advertisements, and wide market reputation. It also issued caution notices and pursued legal actions against infringers.
The respondent, Alka Industrial Corporation, applied for registration of “AiC ARUN” in Class 7 on 17 January 2007, claiming user since 2004. The mark was published in 2010 and registered in 2011.
The petitioner sought cancellation and rectification of the respondent’s trademark under Sections 47, 57, and 125 of the Trade Marks Act, alleging deceptive similarity and dishonest adoption.
Arguments of the Petitioner
The petitioner argued that it was the prior adopter and registered proprietor of “ARUN” since 1962. Documentary evidence showed continuous commercial use and statutory registrations.
It was contended that:
- Both parties dealt in sewing machines (Class 7)
- Consumer base and trade channels were identical
- “ARUN” was the dominant feature of both marks
The addition of “AiC” did not eliminate confusion.
The respondent was located near the petitioner’s business area and was aware of the petitioner’s reputation. The adoption of “ARUN” was allegedly intended to exploit goodwill. The petitioner relied on sales figures, advertisements, court decrees, and promotional material to establish secondary meaning and distinctiveness.
He relied on Shambhu Nath & Brothers v. Imran Khan (2018 SCC OnLine Cal 7145) and Greaves Cotton Ltd. v. Mohammad Rafi (2011 SCC OnLine Del 2596). These cases emphasized protection of dominant features in trademarks.
The respondent argued that the two marks were visually and structurally different. “AiC” represented Alka Industrial Corporation and distinguished the mark.
It was contended that “ARUN” is a common Indian name and publici juris, incapable of exclusive ownership. The petitioner did not oppose the mark at the publication stage under Section 21. Therefore, it was barred from challenging the registration later.
The respondent claimed honest adoption and legitimate registration after a Search Report was issued by the Registry. He submitted that the petitioner’s sales continued to rise, showing no actual damage.
He relied on Surya Agro Oils Ltd. v. Surya Coconut Oil Industries (AIR 1995 Del 72) and Himalaya Drug Co. v. SBL Ltd. (2010). These cases dealt with descriptive and generic marks.
Analysis of the Court and Reasoning
- Prior User and Proprietorship
The Court found overwhelming evidence showing that the petitioner had used “ARUN” since 1962. Multiple trademark and copyright registrations supported its claim. Relying on settled principles, the Court held that prior use prevails over subsequent registration.
- Distinctiveness and Goodwill
The petitioner’s long usage, advertisements, court actions, and sales figures established that “ARUN” had acquired secondary meaning and distinctiveness. The respondent failed to produce evidence that “ARUN” was commonly used in the trade.
- Test of Deceptive Similarity
Applying the “average consumer with imperfect recollection” test, the Court held that:
- “ARUN” was the essential and dominant feature
- “AiC” was merely a prefix
- Phonetic, visual, and structural similarity existed
The Court relied on Aristoc v. Rysta (1945) and Himalaya Drug Co. (DB, 2012). These cases emphasize first impression and consumer confusion.
- Rejection of Generic Argument
The Court distinguished Surya Agro Oils, holding that “ARUN” had acquired distinctiveness through long use. It was not merely descriptive or generic.
- Maintainability Despite No Opposition
The Court rejected the argument based on Sections 21 and 23. It held that Sections 47 and 57 provide independent remedies for rectification. Failure to oppose at the publication stage does not bar rectification.
- Reliance on Greaves Cotton Case
The Court relied on Greaves Cotton Ltd., which held that adding prefixes or suffixes does not cure infringement when the essential part is copied.
Conclusion and Final Orders:
The decision in Satya Paul v. Alka Industrial Corporation (2026) reinforces core principles of Indian trademark law that is- Prior use overrides subsequent registration, Dominant feature test remains central, Prefixes and suffixes do not prevent infringement and Rectification remedies are independent of opposition proceedings
The judgment also reflects a balanced approach by protecting the senior user while allowing the junior user to continue business under a modified mark.
Instead of completely cancelling the respondent’s registration, the Court exercised powers under Section 57 and ordered variation of the mark. The court orderd that
- The word “ARUN” shall be deleted from “AiC ARUN”.
- The respondent may continue using “AiC” alone.
- The respondent may adopt a new mark complying with the safe distance rule.
- The Registrar of Trade Marks was directed to rectify the Register within six weeks.
Thus, the petition was allowed with modification.
Case Title: Satya Paul v. Alka Industrial Corporation (2026)
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