The court held that prior use of a trademark, if proven to be continuous before the registration of a similar mark, protects the user from claims of infringement under Section 34 of the Trade Marks Act, 1999. This overrides the exclusive rights granted by registration under Section 28 when prior use conditions are met.

The court dismissed the appeal by Leben Life Science Pvt. Ltd. seeking a temporary injunction against Jarun Pharmaceuticals for using a deceptively similar trademark "Reben-20" and "Reben-DSR" to their registered mark "Rben." The court found that Jarun Pharmaceuticals demonstrated continuous prior use of the disputed trademarks before the appellant's registration, and thus was protected under Section 34 of the Trade Marks Act, 1999.

1. Introduction and Appeal Overview:

• Fact: Leben Life Science Pvt. Ltd. filed an appeal against the dismissal of a temporary injunction in a trademark suit, claiming infringement by Jarun Pharmaceuticals for using the marks "Reben-20" and "Reben-DSR."
• Legal Basis: The appellant invoked the Trade Marks Act, 1999, seeking to restrain the respondent from using a deceptively similar mark.

2. Appellant's Case:

• Fact: Leben Life Science argued that their predecessor registered the mark "Rben" in 2013, and since then, they have exclusively used it. They claimed that Jarun’s similar marks infringed upon their rights.
• Argument: The appellant stated that prior use should be continuous and submitted that Jarun's prior use was neither continuous nor after 2013.

3. Respondent's Defense:

• Fact: Jarun Pharmaceuticals contested the claim, producing evidence of continuous prior use of the marks since 2008.
• Legal Reference: Section 34 of the Trade Marks Act, 1999, which protects prior users of a trademark from the claims of registered proprietors, was invoked by the respondent.

4. Legal Provisions Discussed:

• Section 28: Grants the exclusive right to use a registered trademark.
• Section 34: Protects the prior use of a trademark before the registration of a similar or identical mark.

5. Court's Analysis of Continuous Use:

• Fact: The court emphasized that Jarun Pharmaceuticals had provided sufficient evidence of continuous use of the mark since 2008, including invoices, sales statements, and advertisement expenses.
• Precedents: The court referenced earlier judgments on prior use, including Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Ltd. and Neon Laboratories Ltd. v. Medical Technologies Ltd., to clarify the requirements for proving prior use.

6. Outcome:

• Judgment: The court upheld the District Judge's order denying the temporary injunction. However, it directed Jarun Pharmaceuticals to maintain accounts of profits from the use of "Reben-20" and "Reben-DSR" for potential future damages if the appellant wins the final suit.

Acts and Sections Discussed:

• Trade Marks Act, 1999:
  • Section 28: Rights conferred by registration.
  • Section 34: Protection of prior users from claims by registered proprietors.

Subjects:

Trademark Infringement, Prior Use Defense

Trade Marks Act, 1999, Prior Use, Section 28, Section 34, Continuous Use, Temporary Injunction