Delhi HC: Earlier Trademark Filing Date Prevails Over Later Commercial Use

Kaustav Chowdhury
Aug 17
7 min read

Introduction

In a significant ruling on trademark priority, the Delhi High Court has held that an earlier trademark filing date prevails over subsequent commercial use, even where the later applicant has built substantial market presence and goodwill over nearly two decades. The judgment in Parle Products Private Limited v. The Registrar of Trade Marks and Anr. [C.A. (COMM.IPD-TM) 49/2025, decided on March 10, 2026 by Justice Tushar Rao Gedela] reaffirms the primacy of Section 18 of the Trade Marks Act, 1999 (the "Act") in determining proprietorship when competing "proposed to be used" applications are filed for identical marks.

The ruling was subsequently upheld by a Division Bench of the Delhi High Court in LPA 316/2026 [decided on July 28, 2026 by Justices V. Kameswar Rao and Manmeet Pritam Singh Arora], cementing the principle that filing seniority under Section 18 cannot be displaced by a subsequent applicant's market success. The case has attracted considerable attention from trademark practitioners and brand owners because of its implications for the relationship between statutory filing priority and commercial use.

Factual Background: The "20-20" Trademark Dispute

The dispute centred on the trademark "20-20" in Class 30 (covering food products, including biscuits). The essential facts are as follows:

On September 27, 2007, Avon Agro ("Respondent No. 2") filed Trade Mark Application No. 1606126 for the mark "20-20" in Class 30 on a "proposed to be used" basis.
One week later, on October 4, 2007, Parle Products Private Limited ("Parle") filed Application No. 1608183 for the same mark in the same class, also on a "proposed to be used" basis.
Parle launched biscuits under the "20-20" brand between 2007 and 2008 and achieved continuous commercial use from the financial year 2008-09 onward, building significant consumer recognition and goodwill across India.
Avon Agro, despite filing its application one week before Parle, never entered the market or commenced commercial use of the "20-20" mark.
On April 29, 2025, the Registrar of Trade Marks dismissed Parle's opposition to Avon Agro's application and allowed Avon Agro's registration to proceed.

Parle challenged the Registrar's decision before the Delhi High Court.

The Legal Framework: Section 18 and the Filing-Date Priority Principle

Section 18 of the Trade Marks Act, 1999 governs applications for registration of trademarks. It provides that any person claiming to be the proprietor of a trademark used or proposed to be used by him, who is desirous of registering it, may apply in writing to the Registrar in the prescribed manner. The section establishes a critical principle: when a trademark is applied for on a "proposed to be used" basis, the rights upon registration relate back to the date of application.

This "relation back" doctrine is central to the present dispute. Where two entities file applications for identical or deceptively similar marks on a "proposed to be used" basis, Section 18 dictates that the earlier applicant (the "senior adopter") holds a superior statutory right by virtue of the earlier filing date, regardless of which party subsequently commences commercial use first.

Parle's primary argument rested on Section 34 of the Act, which protects the rights of prior users. Parle contended that its continuous commercial use since 2007-08, combined with the substantial goodwill it had built, should override Avon Agro's dormant application. The Court, however, drew a sharp distinction between the two provisions.

Key Holdings of the Court

1. Filing Seniority Determines Proprietorship Under Section 18

The Court held that where both applicants filed on a "proposed to be used" basis, the earlier filing date establishes priority. Avon Agro, having filed its application on September 27, 2007 (one week before Parle's October 4, 2007 filing), was the senior adopter and, therefore, the rightful proprietor under Section 18. The Court reasoned that the statutory framework treats the date of application as the determinative factor in the absence of prior use by either party at the time of filing.

2. Subsequent Commercial Use Cannot Displace Filing Priority

The Court rejected Parle's argument that its nearly two decades of continuous commercial use, extensive advertising, and nationwide consumer recognition should override Avon Agro's earlier filing date. The Court observed that allowing a subsequent applicant to displace a prior applicant solely on the basis of market success would undermine the statutory priority framework established by Section 18. The one-week filing advantage, though narrow in temporal terms, was held to be legally decisive.

3. Section 34 (Prior User Rights) Distinguished

The Court addressed Parle's reliance on Section 34, which protects the rights of persons who have used a trademark from a date prior to another's use or registration. The Court drew a distinction: Section 34 protects "prior" use, meaning use that predates the competing party's use or registration. In this case, however, Parle's commercial use commenced after both applications had been filed. Parle was not a "prior user" in the Section 34 sense because its use postdated Avon Agro's application. The Court noted that Parle's manufacturing and sales in the interregnum (between filing and registration) did not confer special benefits that could override the statutory priority of the earlier application.

4. Division Bench Upholds the Single Judge's Decision

The Division Bench (Justices V. Kameswar Rao and Manmeet Pritam Singh Arora) dismissed Parle's appeal in LPA 316/2026 on July 28, 2026. The Bench held that the respondent's registration "would still be prior to the adoption and use, both, by the appellant" and that the appellant "commencing its manufacture and use of the same mark in the interregnum, will not give any special benefit." Notably, the Bench also observed that Parle had, in earlier proceedings, described the competing marks as "visually, phonetically and conceptually different," and treated this as approbation and reprobation, weakening Parle's position.

5. Rule 37 of the Trade Marks Rules, 2017: Limits on Post-Filing Amendments

While the primary holding concerned Section 18 priority, the case also touched upon Rule 37 of the Trade Marks Rules, 2017, which governs amendments to trademark applications after filing. Rule 37 permits corrections or amendments before registration but expressly prohibits any amendment that would substantially alter the trademark applied for or substitute a new specification of goods or services not included in the original application. This provision reinforces the principle that the scope of protection is fixed at the time of filing and cannot be expanded subsequently to gain a tactical advantage.

Practical Implications for Brand Owners and Trademark Practitioners

File Early, File First

The most immediate takeaway from this ruling is the critical importance of filing trademark applications at the earliest possible stage. The case demonstrates that even a one-week filing advantage can be decisive. Brand owners should file trademark applications as soon as a mark is conceived, ideally before any public disclosure, product launch, or marketing activity. Waiting to build commercial use before filing is a risky strategy, as a competitor who files one day earlier on a "proposed to be used" basis may acquire superior statutory rights.

Commercial Success Is Not a Substitute for Filing Priority

The ruling underscores that commercial success, consumer recognition, and market goodwill, however extensive, cannot override statutory filing priority under Section 18. Parle's nearly two decades of continuous use and nationwide brand recognition were insufficient to displace Avon Agro's one-week filing advantage. This principle applies with equal force to startups, FMCG companies, technology firms, and any other entity building a brand in India.

Conduct Comprehensive Clearance Searches Before Filing

The case highlights the importance of conducting thorough trademark clearance searches before adopting and investing in a new brand. A comprehensive search of the Trade Marks Registry database would have revealed Avon Agro's pending application, potentially allowing Parle to evaluate the risk before committing significant resources to the "20-20" brand. Businesses should treat trademark clearance as a prerequisite to brand adoption, not an afterthought.

Monitor Pending Applications and Oppose Promptly

Brand owners should implement watch services to monitor the Trade Marks Journal for applications that may conflict with their existing or planned marks. Early detection of potentially conflicting applications allows for timely opposition, which can be more effective than challenging a granted registration at a later stage.

Revisit Brand Portfolio Strategies for Multi-Mark Businesses

Companies operating multiple brands or sub-brands should review their trademark portfolios to ensure that all marks in active use are backed by timely registrations. The Parle ruling illustrates that a strong market presence alone offers no guarantee of statutory protection. Businesses should align their brand launch timelines with their trademark filing schedules, ensuring that applications are filed before, or simultaneously with, any product or marketing launch. In sectors such as FMCG, pharmaceuticals, and consumer technology, where brand proliferation is common, a systematic approach to portfolio management can prevent exposure to the type of risk that materialised in this case.

The Broader Debate: Section 18 vs Section 34

The Parle ruling has reignited a broader debate within the Indian intellectual property community about the relationship between Section 18 (filing-date priority) and Section 34 (protection of prior users). The Act, by design, accommodates both the registration-based system and common-law use-based rights. Section 34 protects persons who have used a trademark from a date prior to another party's use or registration, allowing them to continue using the mark notwithstanding a later registration by someone else.

The tension arises in cases like the present one, where the prior user's use commenced after the competing application was filed but before registration was granted. The Court's strict interpretation of Section 18 means that the date of application, not the date of commercial adoption, is the relevant benchmark. Critics of this approach argue that it elevates form over substance, allowing a dormant applicant who never enters the market to block a business that has invested significantly in building a brand. Supporters, on the other hand, contend that a registration system can function effectively only if filing dates are treated as determinative; permitting subsequent commercial use to override filing priority would create uncertainty and incentivise delay in the registration process.

Whatever one's position on this policy question, the Parle ruling, now confirmed by a Division Bench, is binding precedent within the Delhi High Court's jurisdiction and is likely to influence trademark registration practice across India.

Conclusion

The Delhi High Court's ruling in Parle Products v. Registrar of Trade Marks, now affirmed by a Division Bench, is a strong reaffirmation of the filing-date priority principle under Section 18 of the Trade Marks Act, 1999. The case sends a clear message: in the Indian trademark registration system, the date of filing is paramount. Commercial success, consumer goodwill, and years of market presence, while relevant in other contexts, cannot displace the statutory priority of an earlier applicant who filed on a "proposed to be used" basis. Brand owners and their legal advisers would be well served by prioritising early filing, comprehensive clearance searches, and active monitoring of the trademark register as core elements of their brand protection strategy.

For further reading on intellectual property and related corporate law topics, see our articles on How to Conduct IP Due Diligence for M&A Transactions, Delhi HC Upholds CCI Investigation into Labour Market Coordination, and How to Draft a SaaS Agreement Under Indian Law.