Summary
Parle Products Pvt Ltd and Avon Agro Industries both applied to register the mark '20-20' for biscuits and related goods, filing within a week of each other in September and October 2007, both on a 'proposed to be used' basis. Avon Agro's application, though filed first, took seventeen years to reach registration owing to prolonged inaction at the Trade Marks Registry, while Parle began commercial use of the mark within two years of filing. The Delhi High Court's Division Bench dismissed Parle's appeal against the Registrar's order, holding that between two 'proposed to be used' applicants, the senior applicant's filing date determines proprietorship under Section 18 of the Trade Marks Act, and that a junior applicant's intervening commercial use cannot dislodge that priority. The ruling matters because it draws a firm line between the 'first in the market' doctrine that governs passing off disputes and the filing-date priority that governs competing registration claims, a distinction many practitioners routinely blur.
Background
A gap of exactly seven days between two trademark applications for the same mark outweighed nearly two decades of uninterrupted commercial use, in a 20-20 trademark dispute that shows how strictly Indian trademark law treats filing dates when two applicants race for the same mark on a ‘proposed to be used’ basis.
Parle Products Pvt Ltd (“Parle”), the well-known manufacturer of biscuits, confectionery and snack foods, applied to register the mark ’20-20′ in Class 30 on 4 October 2007, and began commercial use of the mark for its biscuits from around 2009. Avon Agro Industries (“Avon Agro”), the respondent, had filed its own application for ’20-20′ in the same class just a week earlier, on 27 September 2007, also on a ‘proposed to be used’ basis. Avon Agro’s application ran into years of unexplained delay at the Trade Marks Registry: an initial refusal was never communicated, forcing Avon Agro to file a Right to Information application in 2012 and eventually a writ petition before the Delhi High Court in 2016 simply to obtain the grounds for refusal. The Intellectual Property Appellate Board set aside the refusal in 2019, and the application was advertised only in August 2020. Parle opposed the application, but the Registrar of Trade Marks dismissed Parle’s opposition on 29 April 2025 and allowed Avon Agro’s mark to proceed to registration. A Single Judge of the Delhi High Court dismissed Parle’s appeal against that order on 10 March 2026, prompting the present Letters Patent Appeal before a Division Bench.
Issues
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- Whether, as between two applicants who filed for registration of an identical mark on a ‘proposed to be used’ basis, proprietorship under Section 18 of the Trade Marks Act, 1999 (“Trade Marks Act”) vests with the senior applicant by filing date, or shifts to a junior applicant who begins commercial use first.
- Whether the ‘first in the market’ rule applied in passing off actions under Section 34 of the Trade Marks Act extends to a registration and opposition proceeding where the senior applicant has not yet used the mark.
- Whether Parle’s own representations to the Registry in 2008, made to secure its own registration, estopped it from later contending that Avon Agro’s identical mark was deceptively similar and unregistrable.
Parle’s Arguments
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- Contended that priority in trademark law is determined by first use in the market, not merely by filing an application, relying on the Supreme Court’s ruling in Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, which recognised the ‘first in the market’ test.
- Argued that Section 34 protects a prior user’s continuous use against a subsequently registered proprietor, and that Avon Agro’s mark, never used commercially, remained a dormant registration undeserving of priority.
- Submitted that Section 18 could not be read in isolation and had to be harmonised with Sections 11 and 34, so that a junior applicant’s genuine market use should defeat a senior applicant’s unused, ‘proposed to be used’ filing.
- Argued that the Registrar’s order was non-speaking, mechanically favouring Avon Agro as the earlier applicant without weighing Parle’s established goodwill.
Avon Agro’s Arguments
- Pointed out that its application, filed on 27 September 2007, predated Parle’s by seven days, and that it had diligently pursued the application for seventeen years despite prolonged Registry inaction.
- Relied on the Madras High Court’s ruling in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd., 1977 IPLR 83, for the proposition that proprietorship under Section 18 is determined by the date of application, and that use during the pendency of a rival’s earlier application confers no special right.
- Argued that Parle could not approbate and reprobate: having told the Registry in 2008 that ’20-20′ was visually, phonetically and conceptually distinct from cited marks to secure its own registration, Parle could not now claim the identical mark was deceptively similar when adopted by Avon Agro.
Court’s Analysis
Filing Date as the Anchor of Proprietorship under Section 18
The court noted that both parties had filed their applications for ’20-20′ on a ‘proposed to be used’ basis, making this a straight contest between two unused marks rather than a dispute between a registered proprietor and an established user. The court held that Section 18 of the Trade Marks Act does not contemplate two different rules of priority in this 20-20 trademark dispute, one for an applicant who waits for registration before commencing use and another for a rival who starts using the mark while the earlier application is still pending. The court reasoned that reading the provision to permit a junior applicant’s intervening use to defeat a senior applicant’s filing would invite unscrupulous parties to oust genuine senior adopters by rushing into the market the moment a rival application is advertised. The court found that this position has remained settled since the Madras High Court’s ruling in Mohan Goldwater Breweries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd., 1977 IPLR 83, which held that an applicant’s proprietary interest crystallises on the date of application, provided a bona fide intention to use the mark is shown, and that a rival’s subsequent use cannot unwind that priority.
Distinguishing Passing Off from Registration Disputes
The court distinguished the present dispute from the fact pattern in Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, observing that the Supreme Court’s remarks on the ‘first in the market’ test arose in a passing off action where the rival had already commenced commercial use of a competing mark. The court observed that Avon Agro, unlike the defendant in Neon Laboratories, had not commenced manufacture or sale of any product under ’20-20′ at any stage, so the question of whose use came first never arose. The court further reasoned that Section 34 of the Trade Marks Act protects a prior user only where that use predates both the rival’s use and the rival’s registration, whichever is earlier, and that this saving provision answers infringement and passing off claims, not competing claims to registration under Section 18. The court stated that permitting a junior applicant’s use to override a senior applicant’s pending, unused filing would render Section 18 otiose and discourage parties from seeking registration at all, a concern the court traced to the Bombay High Court’s reasoning in Drums Food International Pvt. Ltd. v. Euro Ice Cream & Anr., 2011 SCC OnLine Bom 817.
Registry Delay and the Approbation Bar
The court found that Avon Agro’s seventeen-year wait for registration was attributable entirely to the Trade Marks Registry’s own inaction, including its failure to communicate an initial refusal, and could not be held against Avon Agro or treated as an abandonment of its claim. The court also held that Parle was disentitled from challenging Avon Agro’s registration on the ground of deceptive similarity, since Parle itself had told the Registry in 2008 that ’20-20′ was visually, phonetically and conceptually distinct from other cited marks in order to secure its own registration restricted to biscuits. The court opined that a party cannot approbate and reprobate: having obtained a registration on the strength of one representation, it cannot resist a rival’s identical mark on the opposite premise.
Findings
In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:
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- Avon Agro Industries, having filed its application for ’20-20′ on 27 September 2007, is the senior applicant and the rightful proprietor of the mark under Section 18 of the Trade Marks Act.
- Parle’s commercial use of ’20-20′ from 2009 onward, commenced while Avon Agro’s earlier application remained pending, does not confer any special priority or defeat Avon Agro’s registration.
- The ‘first in the market’ test under Section 34 and the passing off jurisprudence in Neon Laboratories do not apply, since Avon Agro had not commenced use of the mark and no passing off claim arose.
- Parle’s own representations before the Registry in 2008 estopped it from now asserting deceptive similarity against Avon Agro’s identical mark.
- The appeal, along with all pending applications, is dismissed, and the Registrar’s order granting registration to Avon Agro stands affirmed.
Case Citation: Parle Products Pvt Ltd v. The Registrar of Trade Marks & Anr., LPA 316/2026 & CM APPL. 27819-20/2026, Delhi High Court (Division Bench), decided on 28 July 2026. Available at https://indiankanoon.org/doc/69766305/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels