When the trademark filing date outlasts 17 years of actual use: The Section 18 vs Section 34 problem

India has always been a first-to-use jurisdiction. The Trade Marks Act, 1999 was built on the premise that it is the person who builds goodwill in the market who deserves protection, not the person who files earliest and then waits. A judgment delivered by the Delhi High Court on March 10, 2026 has disturbed this premise.

The case is Parle Products Private Limited v. The Registrar of Trade Marks and Anr., C.A.(COMM.IPD-TM) 49/2025, decided by Justice Tushar Rao Gedela. A party that filed a trademark application one week before Parle, never used the mark for 17 years, and never entered the market at all, was held to be the rightful registered proprietor. Parle, which launched its biscuits under the mark in 2008 and built pan-India goodwill, lost.

On September 27, 2007, Avon Agro filed Trade Mark Application No. 1606126 for the mark "20-20" in Class 30 on a "proposed to be used" basis. On October 4, 2007, Parle filed Application No. 1608183 for the same mark in the same class, also on a "proposed to be used" basis. The gap was seven days.

Parle launched its biscuits between 2007 and 2008. It obtained registration certificates nos. 1608181, 1608182 and 1608183 in its name on 01 November 2017 and built substantial goodwill across India. Avon Agro never entered the market. It merely prosecuted its application before the Registry.

On April 29, 2025, the Registrar dismissed Parle's opposition and allowed Avon Agro's application. The Delhi High Court dismissed Parle's appeal on 10 March 2026.

The Court's reasoning rested on Section 18 of the Trade Marks Act, 1999. Both parties had applied on a "proposed to be used" basis. Neither had use at the date of filing. Where that is the position, the Court held, filing seniority determines who is the true proprietor. Avon Agro, having filed one week earlier, was the senior adopter.

In paragraph 46, the Court stated:

"Applying the settled propositions, it is clear that the respondent no.2 had applied for registration of mark '20-20' on 29.09.2007, while the appellant had applied on 04.10.2007, thus, undeniably making respondent no.2 the senior/prior adopter of the said mark."

On Parle's actual use after filing, the Court was unambiguous. In paragraph 44, it held that subsequent use by one of the parties in a "proposed to be used" contest "would not enure to its benefit in any manner and such prior use in the eyes of law shall be inconsequential." Paragraph 47 added that 17 years of commercial use by Parle would not give it any "special benefit or treatment" over the earlier filer.

The Court rejected Parle's argument based on Section 34. The Court's answer, in paragraph 50, was that the reference to Section 34 was "rendered inconsequential." In paragraph 37, the Court confined Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, to passing off actions. Since Avon Agro had not entered the market, passing off did not arise and the ratio of Neon Laboratories was held inapplicable.

The Delhi High Court's reasoning sits uneasily with settled Supreme Court law.

In S Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, a Constitution Bench stated at paragraph 10:

"Conjoint reading of Section 34, 27 and 28 would show that the rights of registration are subject to Section 34...the scheme of the Act is such where rights of prior user are recognized superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of prior user."

The Court did not limit that observation to passing off. It spoke of the scheme of the Act. That is a statement of general principle.

In Neon Laboratories, the Supreme Court, at paragraph 9, held that a prior user's rights override those of a subsequent user even though that subsequent user had been accorded registration of its trade mark. The Court refused to allow a dormant registration to obliterate the goodwill of an actual user.

A third decision the Delhi High Court did not engage with is Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142; (1960) 1 SCR 968. The Supreme Court held there that the reputation of a trademark built through actual use is the decisive test for proprietorship. Mere filing does not create proprietorship. Section 18(1) of the 1999 Act requires "any person claiming to be the proprietor" to establish that claim. Corn Products makes clear that the claim must have substance. It cannot rest on a filing receipt alone.

The Delhi High Court judgment creates an internal contradiction in the Indian trademark system. At the Registry level, filing priority now controls all "proposed to be used" disputes. Years of market use count for nothing. In court. However, those same years of use sustain a passing off action and can ground a rectification petition under Section 57.

This means a party that builds a national brand but files one week late must pursue separate litigation to protect rights that should have been recognised at the registration stage itself. The register no longer reflects the market. It reflects who filed seven days earlier.

The incentive this creates is clear. File early on a "proposed to be used" basis and prosecute patiently through the Registry. Even if a competitor builds a nationwide brand in the meantime, the early filer holds a registered right at the Registry level.

Whether the Delhi High Court's approach survives scrutiny at the Supreme Court level is a question the higher courts will have to answer. The decisions in S Syed Mohideen (2016) 2 SCC 683 and Corn Products AIR 1960 SC 142 were not overruled. They were distinguished or simply not engaged. Those precedents remain available.

For now, the Parle judgment is the operative position at the Registry. A party that never entered the market has walked away with a registered trademark. A party that built a national brand has been told its 17 years of use are inconsequential.

That outcome demands a second look.

About the author: Sidhartha Das is a Partner at Vera Lex.

Disclaimer: The opinions expressed in this article are those of the author(s). The opinions presented do not necessarily reflect the views of Bar & Bench.

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