S. Syed Mohideen v. P. Sulochana Bai

A leading judgment explaining the prior user principle and the supremacy of common law rights over registered trademark rights.

Summary

This case centres on the conflict between a prior user of a trademark and a later registered proprietor. Syed Mohideen, who had been using the mark “Iruttukadai Halwa,” claimed that his use of the mark for many years gave him superior rights. Sulochana Bai, however, obtained registration for a similar mark and attempted to prevent Syed Mohideen from continuing the use.

The Supreme Court clarified that Indian trademark law recognises superior rights of a prior user, even when the opposite party holds a valid registration. Registration does not automatically override long and continuous prior use.

Facts

Syed Mohideen had been using the mark “Iruttukadai Halwa” for several decades. His business became widely known in the region. Later, Sulochana Bai managed to obtain trademark registration for a similar mark and issued objections and legal notices.

Syed Mohideen argued that he was the earlier user and his goodwill could not be disturbed by a later registrant. He relied on Section 34 of the Trade Marks Act, which protects earlier users.

Findings

The Supreme Court reiterated the principle that prior user rights prevail over registration. The Court explained that the purpose of Section 34 is to ensure that a person who first uses a mark should not be disturbed by someone who later obtains a registration.

The Court also held that passing off is a broader remedy and protects goodwill even when a party does not have a registration.

Suggestions

Businesses should document their date of adoption and continuous use through invoices, advertisements, and proofs. Prior users can always defend their rights even against registered trademarks, so maintaining evidence of use is crucial.

Judgment

The Supreme Court ruled in favour of Syed Mohideen, holding that his prior user rights were superior. The registered proprietor could not stop him from continuing his long-standing use of the mark.