Delhi High Court draws clear line between first in the market and earlier priority in case involving rival proposed-use applications 

What happens when two parties apply for the same mark on a “proposed to be used” basis, but the later applicant enters the market first? In Parle Products v Registrar of Trademarks & Anr, the Delhi High Court has held that commercial use by the subsequent filer cannot displace the priority attaching to the earlier application (LPA 316/2026 & CM APPL 27819-20/2026).

Background

Parle, an Indian multinational engaged in the manufacture and marketing of biscuits and cookies, filed an application for registration of the trademark 20-20 on 4 October 2007 on a proposed-to-be-used basis in Class 30, which proceeded to registration in 2017. 

Avon Agro Industries applied for registration of the mark “20-20” on 27 September 2007, on a proposed-to-be-used basis, just one week before Parle. Parle opposed Avon’s application and it remained pending at the Trademarks Registry for 17 years. The Registrar of Trademarks dismissed Parle’s opposition on merits and allowed Avon’s application to proceed to registration based on the reasoning that Avon was senior in terms of filing and hence ought to be granted registration.

Single-judge ruling 

Parle appealed the Registrar’s decision before a single judge of the Delhi High Court. It contended that Avon’s application for the trademark was filed on a proposed-to-be-used basis and it was in fact Parle that was prior in terms of use. Parle claimed to have used the mark since 2007/2008 and furnished an invoice dating back to 2009 to substantiate its prior user claim. Placing reliance on the Supreme Court’s ruling in Neon Laboratories v Medical Technologies & Ors (2016), Parle argued that courts in India have vested prior rights by virtue of prior use of the mark (ie, based on which party is “first in the market” rather than first in terms of adopting or filing a trademark) (2 SCC 672). Further, relying on section 34 of the Trademarks Act 1999, Parle asserted that a prior user of a trademark cannot be restrained from using a mark by the registered proprietor of an identical mark. It further reasoned that a proprietor that actually commences use of a trademark invests in it and ultimately builds reputation and goodwill therein. On the other hand, a party that merely files an application for a trademark but does not put said mark to use and allows the other party to build commercial recognition for it by virtue of use cannot be given priority merely because the said party was first to apply for that mark. It also contended that Avon’s prolonged non-use of the trademark for 17 years equated to abandonment of the mark.

Avon pointed out that Parle’s application was filed on 4 October 2007 on a proposed-to-be-used basis and therefore Parle was the subsequent adopter of the mark. Moreover, when Parle’s application was examined, Avon’s prior mark was cited as a conflicting mark in the examination report issued by the registry. To overcome the citation, Parle submitted that the rival marks were different and limited its specification of goods under the application to biscuits. However, owing to an error in the registry’s records, Parle’s application proceeded to advertisement and thereafter registration in respect of all goods. Avon also asserted that under section 18, in cases where rival applications are filed on a proposed-to-be-used basis, subsequent use by one applicant does not defeat the priority of the earlier application. Avon claimed that it had diligently pursued its application before the Registrar for 17 years and explained that the delay in commercial use was not an act of abandonment but a consequence of delay at several procedural stages at the registry.

In his order dated 10 March 2026, the single judge noted that since Avon’s mark was cited against Parle’s application during the examination stage, Parle’s knowledge of Avon’s mark dated back to the time of examination (2008). Despite this knowledge, Parle commenced use of the mark. The stance taken by Parle in its response to the examination report was also held to amount to approbation and reprobation. Taking note of Mohan Goldwater Breweries v Khoday Distilleries and Ors, which entailed similar facts, the judge confirmed that in cases where both applications are filed on a proposed-to-be-used basis, the senior adopter would oust the junior adopter for purposes of registration, and prior use by subsequent adopter would be inconsequential. The judge distinguished Neon Laboratories as a decision rendered in the context of passing off and held that its first-in-the-market principle did not determine the present registration dispute. Since Avon had not yet commenced use of its mark, the question of passing off did not arise.

Appeal before the division bench

Parle appealed the judge’s order before the division bench of the Delhi High Court, arguing that the single judge had accorded determinative value only to Avon’s prior filing date while disregarding Parle’s prior use. It was also argued that vesting prior rights merely based on the earlier filing date would lead to trademark squatting. With regard to its response to the examination report, Parle clarified that its stance on “dissimilarity of marks” was not taken against Avon’s mark in particular, but was a standard format response to address the multiple cited trademarks.

Dismissing Parle’s appeal, the bench interpreted section 34 and explained that a user is accorded priority over a registration only when such user is prior to the use of the mark by the registered proprietor or the effective date of registration in its favour, whichever is earlier. Avon had not commenced use of the mark, but pursuant to the dismissal of Parle’s opposition, it was granted registration dating back to its date of application in September 2007. That date preceded Parle’s application and subsequent use. Parle was, therefore, unable to defeat Avon’s right over the mark. The bench also agreed that Neon Laboratories arose in the context of passing off and did not make Parle’s subsequent use determinative in the present registration proceedings.

By holding that subsequent use was inconsequential when evaluating rival proposed-to-be-used applications, the Delhi High Court’s ruling underscores that an earlier application cannot be displaced merely because the later applicant commences commercial use while the applications remain pending. Further, the court’s strict application of the doctrine against approbation and reprobation serves as a strong reminder that parties cannot claim that marks are distinct to clear examination hurdles, only to later contend that the cited mark is deceptively similar.