Can I register a trademark that I have been using for a long time?

Yes, but the requirements for registration will differ. The proprietor will have to submit an affidavit attaching evidence of use of the mark. Business names are just a name to be recognized, but Trademarks are property. If you choose to get your trademark registered at a later stage, a search is better to be conducted so as to be sure about the distinctive usage of your trademark.

One should not have any problem if one is a Well-Known mark in the area in which one is seeking registration. Otherwise, you can expect objections and even refusal of registration. In case of an infringement, you can claim rights of passing off or on valid grounds of objection like very long usage and popularity. If the situation arises that both parties have established valid and concurrent use, they could either be made joint owners of the trademark, or allowed to continue business simultaneously but distinct of each other. On the basis of the ‘date of first use in commerce’, and recognition of the mark, one may be granted registration. There is also a chance that one may be granted a trademark similar to that of another on the grounds of ‘use in good faith’.

The date of first use in commerce is the date when the goods were first sold or transported under the mark in any type of commerce. This use should be good enough for customers to differentiate the mark from that of the other marks in the market. It need not only be use of the mark in connection with selling the goods or services but can also be a mark used for the purpose of advertising, marketing, whatever it might be.  And then the second element is if it was followed by activities providing a continuous effort or intent to use the mark. One cannot start using a mark, stop using it and then claim rights over a mark based on the ‘date of first use’. It should be continuously used at least for a period of five years and three months before a person makes an application for the trademark.

For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in India or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of any other type, as far it is made for use in commerce and continuously.

Section 34 of the Trademarks Act, 1999 deals with prior users and their rights. An exclusive right obtained by registration cannot be used to interfere or restrain a person from using a mark which he is using from a prior date. On rare accounts, two or more persons can register same or similar trademarks with limitations prescribed by the registrar. The prior users get the right to be protected only on the fulfillment of following conditions:

• The mark should have been used from a date prior to the use of the registered trademark, or prior to the date of registration, whichever is earlier.
• The prior use claimed must be by the proprietor himself or his predecessor in title.
• The use claimed must be in continuous use.

The Registrar cannot refuse registration of the prior mark because of the existence of the registered trademark on the register. It is not sufficient to plead use prior to registration. The prior user must show that they were substantial users prior in use to the application for registration.

Section 34 can be taken as a defense against infringement. This Section cannot be applied to obtain an injunction restraining the registered proprietor from interfering with the right of the prior user to use the trademark. The importance of “prior user” is reflected in Titan Industries Ltd. v. Registrar of Trademarks, where an application was filed for registering trademark ‘Classic’ in respect of clocks, watches, time pieces and other parts included in Class 14 claiming usage since 1987. But when the application was advertised in the Trademark Journal, Appellants filed their notice of opposition on the grounds that they are manufactures and dealers of wrist watches and they are the proprietors of ‘Titan’ word per se. They further claimed that they were the registered proprietors of the trademark Titan “Classique” and that they are popularly known as ‘classique’ or ‘classic’. Titan Industries contented that they had registered the trademark “Titan Classique” as early as 25/08/1986 and it is also pointed out that the second respondent company was incorporated in the year 1988 only. This contention by ‘Titan’ was considered by the IPAB and the case was decided accordingly, emphasizing on the importance of prior date of use.

Evidences of prior use:

• Advertisements and sales campaigns,
• Proofs of inherited business using the mark,
• Invoices and Bills,
• Website pages,
• Survey reports

We hope this article was a useful read. 

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