THE RATIO — one judgment, decoded twice: once for anyone, once for the profession.

Headnote

“20-20” is one of India’s most recognisable biscuit brands, sold by Parle Products for close to two decades. It has just lost a registration fight over its own name to a company that has never sold a single product under that mark. The reason has nothing to do with fame, goodwill, or market presence, and everything to do with a form filed seven days earlier, in September 2007, and then left unactioned by the Trade Marks Registry for the better part of a decade.

Factual Background

In September 2007, the entity referred to in the judgment as respondent no. 2 applied to register “20-20” in Class 30, on a “proposed to be used” basis — meaning it had not yet sold anything under the mark but intended to. Seven days later, Parle Products Pvt Ltd filed its own applications for “20-20,” “TWENTY-20” and “T20” for the same class of goods (the timing was likely no accident: India had won the inaugural T20 World Cup weeks earlier, and “Twenty-20” was suddenly a phrase worth owning). Parle went on to actually use “20-20” from 2007–2008, building it into a familiar low-cost biscuit brand, and its own applications matured into registration.

Respondent no. 2’s application had a far rockier path. An examination report in 2008 raised objections; respondent no. 2 replied and made oral submissions in 2010 — and then heard nothing. Not a rejection, not an acceptance, for years. It eventually filed a Right to Information request in 2012 just to learn that a refusal order had, in fact, been passed and never communicated. Reminders in 2013 and 2015 went nowhere, forcing a writ petition in 2016 to compel the Registry to even disclose the grounds of refusal — finally communicated in March 2016, roughly eight years after the objection was first raised. Respondent no. 2 appealed to the Intellectual Property Appellate Board, which set aside the refusal in 2019 and directed the application to proceed to publication. It was advertised in the Trade Marks Journal in August 2020 — thirteen years after filing.

Parle opposed the application. After evidence was exchanged over the following years, the Registrar dismissed Parle’s opposition in April 2025 and allowed respondent no. 2’s mark to proceed to registration, issuing the certificate the same day, without waiting for the statutory appeal period to run. A Single Judge dismissed Parle’s appeal against that decision in March 2026; this further appeal, to a Division Bench, is what the Court has now also dismissed.

The Question for Determination

The dispute turns on a genuine tension inside Indian trade mark law: for registration purposes, does priority belong to whoever filed first, or to whoever actually used the mark first in the marketplace?

Parle’s case rested on the “first in the market” principle — that trade mark rights flow from actual commercial use and the goodwill it generates, not merely from paperwork, and that Section 34 of the Trade Marks Act protects a continuous prior user against a later registrant. Parle leaned heavily on the Supreme Court’s decision in Neon Laboratories v Medical Technologies (2016), where a party that had registered a mark but left it unused for twelve years was denied an injunction against a rival that had built real goodwill in the meantime.

Respondent no. 2’s case was that this is simply not the same question. Its application predated Parle’s by seven days; under Section 18 of the Act, priority for registration is fixed as of the application date, provided there was a genuine intention to use the mark at that time. Whether the applicant actually gets round to using the mark afterwards, and how long that takes, does not reopen the question — particularly where the delay was the Registry’s doing, not the applicant’s own inaction.

The Court’s Reasoning

The Division Bench, agreeing with the Single Judge, drew a sharp line between two different kinds of trade mark contest. Neon Laboratories, it held, was a passing-off case, concerned with protecting goodwill built through use against a registered proprietor trying to invoke its registration defensively — it was never authority for how a Section 18 registration dispute should be decided, where the question is simply who is entitled to the entry on the register in the first place. For that question, the Court preferred the Madras High Court’s reasoning in Mohan Goldwater Breweries v Khoday Distilleries (1977): rights to register are fixed by reference to the application date, an applicant need not have already used the mark, and a rival’s use during the years an earlier application sits unresolved creates no superior right capable of defeating that earlier applicant.

Applied here, the delay was doing no work for Parle. Respondent no. 2’s seventeen-year wait, the Court found, was not the kind of voluntary inaction that sank the registrant’s case in Neon Laboratories — it was directly traceable to the Registry’s own failure to communicate a decision, a failure respondent no. 2 had to chase through an RTI application and, eventually, a writ petition. Parle’s own commencement of use during that window did not improve its position.

The Court also drew on a separate, contemporaneous Division Bench decision, Thukral Mechanical Works, which examines what is sometimes called “Kerly’s impasse” — the fact that a right to sue for passing off (available to whoever built goodwill through use, regardless of registration) and a right to sue for infringement (available to whoever holds a valid registration) can sit with two different parties at once, neither fully able to extinguish the other’s claim. The Bench used that discussion to observe that respondent no. 2’s registration relates back to September 2007, earlier than Parle’s own first use — meaning Parle’s use, however extensive, does not predate respondent no. 2’s priority date and so cannot ground the Section 34 defence Parle was relying on.

Two further points sealed the appeal. First, Parle could not now argue the marks were deceptively similar, having told the Registry in 2008 — to overcome an objection to its own application — that the marks were visually, phonetically and conceptually different, and having voluntarily restricted its own registration to “biscuits” to get it through. A party cannot approbate and reprobate: having taken one position to secure its own registration, it cannot take the opposite position to attack someone else’s. Second, since respondent no. 2 has never placed goods on the market, there is no passing-off scenario for Section 11(3)(a) to operate on at all — that provision requires a likelihood of confusion in the market, which cannot arise from a mark nobody has used.

Critical Assessment

The most striking thing about this outcome is how little it actually turns on either party’s conduct in the marketplace, and how much it turns on an administrative failure. Respondent no. 2’s decade-plus wait was not a strategic advantage it engineered; on the Court’s own account, it was the Trade Marks Registry that sat on a refusal order for years without telling anyone, forcing an RTI application and then a writ petition just to find out where things stood. Had the Registry communicated its decision promptly in 2008 or 2010, this entire contest, and Parle’s eighteen years of trading under a name it now cannot use with complete confidence, might never have arisen in its present form. That is not a criticism of this Bench, which had to decide the case on the facts before it — but it is worth naming plainly that the outcome here is, in real part, downstream of a registry failure rather than a judgment about which party better deserves the mark.

There is also a question the judgment does not resolve, because it was not asked to. Winning the opposition gives respondent no. 2 a registration; it does not, by itself, settle who could actually stop whom from trading under “20-20” going forward. The Thukral “impasse” the Bench itself invokes cuts in a way worth spelling out: because the Court holds that Parle’s use only began after respondent no. 2’s priority date, the Section 34 shield Parle would need if respondent no. 2 ever sued it for infringement looks considerably weaker on this reasoning than Parle’s eighteen years of market presence might suggest to a layperson. Nothing in this judgment decides that question either way, since no infringement claim was before the Court — but a business that has spent two decades building a household biscuit brand coming out of a registration dispute arguably more exposed to a future infringement claim than before is a real consequence worth flagging, not a technical footnote.

Finally, credit where due: Parle’s own case had a genuine, self-inflicted weakness. Having told the Registry in 2008 that the marks were not confusingly similar, in order to secure its own registration, it was always going to be difficult to credibly argue the opposite in 2026. Whatever view one takes of the rest of the reasoning, the Court’s rejection of Parle’s position on this specific point is hard to fault.

Implications

If you’re not a lawyer: this is a useful, uncomfortable reminder that being the brand everyone actually recognises is not, by itself, a legal trump card. Filing first still counts for a great deal in Indian trade mark law, even against a rival who has spent years and real money building a household name — and delay caused by the Trade Marks Registry itself will not necessarily be held against whoever filed first and then had to wait it out. If a search of the register turns up an earlier “proposed to be used” application in your space, treat it as a real risk to clear up front, not a technicality to worry about only once the other side actually starts trading.

For the profession: this is a clean, citable confirmation that Neon Laboratories and the “first in the market” line of authority do not govern Section 18 registration-priority disputes, which remain the province of Mohan Goldwater Breweries and its progeny in this Court (Enterprises Pvt Ltd, Radico Khaitan, and now this decision) — priority fixed by application date, regardless of subsequent use or non-use. The approbation-and-reprobation point is worth keeping in the toolkit generally: representations made to the Registry to secure one’s own registration can foreclose contrary positions taken later against a third party. Two threads to watch: first, Thukral Mechanical Works itself remains before the Supreme Court on special leave, with the parties directed toward mediation and a status quo order in place since March 2026 — the doctrinal question of how the “Kerly impasse” plays out is not yet settled at the apex level, whatever this Bench’s reading of it. Second, respondent no. 2 still has not used its mark even a year after registration; a rectification application under Section 47 for non-use, once the statutory period runs, is an obvious next move for Parle that this judgment neither forecloses nor addresses.

Case Details

  • Citation: LPA 316/2026 & CM APPL. 27819–20/2026
  • Court: Delhi High Court, Division Bench — V. Kameswar Rao J and Manmeet Pritam Singh Arora J
  • On appeal from: Order dated 10.03.2026 in C.A.(COMM.IPD-TM) 49/2025, itself on appeal from the Registrar of Trade Marks’ order dated 29.04.2025
  • Reserved: 28 April 2026 · Decided: 28 July 2026
  • Counsel: Mr J. Sai Deepak, Senior Advocate, with others, for the appellant; Mr Gaurav Barathi, SPC, for the Registrar; Mr Ajay Sahni and others for respondent no. 2
  • Precedents applied: Neon Laboratories Ltd v Medical Technologies Ltd (2016) 2 SCC 672 · Mohan Goldwater Breweries Pvt Ltd v Khoday Distilleries Pvt Ltd, 1977 IPLR 83 · Radico Khaitan Ltd v Devans Modern Breweries Ltd, 2019:DHC:1423 · Thukral Mechanical Works v PM Diesels Private Ltd, 2026:DHC:966-DB · Raman Kwatra v KEI Industries Limited, 2023:DHC:83-DB
  • Key paragraphs: [38]–[48] (distinguishing Neon Laboratories from a Section 18 registration dispute) · [49]–[52] (Mohan Goldwater Breweries applied; the Thukral “impasse” discussion) · [56]–[59] (approbation and reprobation; disposition)