India jurisdiction report: What constitutes use of trademarks?

Indian trademark law follows the “first-to-use” principle. Accordingly, the right of a prior user of a trademark is recognised to be superior to that of a registered proprietor. Even registered proprietors cannot interfere with the rights of an unregistered prior user. This has been re-asserted by Indian courts in several judgments over time.

While undoubtedly a registered proprietor in India enjoys exclusive rights over his trademarks and such registration also affords protection against counterfeiting and infringement, in order to claim such exclusivity and protection, the element of ‘usage’ of trademarks becomes vital not only for registration but also for enforcing one’s rights over infringing marks or while defending any cancellation petition filed against a trademark for alleged non-use.

This article provides an insight into the aspect of importance of trademark usage in India from a statutory and judicial perspective.

Relevance of usage during trademark prosecution

Under the Trade Marks Act, the applicant for a trademark is required to establish continuous usage of the trademark by submitting a usage affidavit along with evidence such as advertisements, publicity materials, trade evidences, customer feedback, testimonials, etc.

Filing of usage-related documents assists in establishing not just the owner’s bona fide and prior usage rights over the trademark, but also the distinctiveness acquired by the trademark , thereby enhancing the grounds for registering the trademark. 

Judicial interpretation of what constitutes usage of trademarks

Courts and tribunals in India have interpreted usage of trademarks in their various judgments. What is considered as usage of trademark is:  

Actual use on goods and services;

When there is no actual use on goods or their sale, any promotional material can be construed as use. In Hardie Trading v Addison Paint and Chemicals (2003), the Supreme Court analysed the aspect of “usage” under the act and stated that “to the use of a mark in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods” and thereby held that use may be other than physical and it should not be merely limited to physical use on the goods or to sale of goods bearing the trademark;

"The element of ‘usage’ of trademarks becomes vital not only for registration but also for enforcing one’s rights over infringing marks."

Use of one of the associated trademarks equivalent to use of another;

Use of trademark for export trade as given; and

Use of trademark by a registered user or through licensing.

An exception to the first-to-use principle is the doctrine of “Recognition of Well-known Trademarks”. In the landmark judgment of NR Dongre and Ors v Whirlpool and Ors, the Supreme Court in 1996 recognised the trans-border reputation enjoyed by a trademark proprietor despite lack of any sales and registrations of their marks in India.

Statutory risks associated with non-usage of trademarks

While demonstrating usage of the trademarks may seem to be a procedural requirement during trademark prosecution, it assumes greater significance during enforcement and cancellation proceedings vis-à-vis such trademarks.

The importance of continuous usage of a trademark is compounded owing to the fact that under section 47 of the act, where a trademark is not in continuous use for a period of five years from the date on which the trademark is entered in the Register of trademarks, the registration of such trademark may be removed from the Register for non-use, based on an application by a third party.

Accordingly, it is pertinent to note that if the trademark is being applied for on a proposed-to-be-used-in-India basis, it is essential to commence using the trademark at the earliest opportunity to avoid removal from the Register for non-use.

Summary

Trademark protection in India requires owners to continuously use their trademarks by maximising their promotion and advertisement through all platforms. Such continuous use of trademarks also helps in protecting trademarks in order to ensure easier enforcement against infringement and counterfeiting.

NV Saisunder is a fourth-generation lawyer and leads the technology, media and IP law practice at Eshwars. He can be contacted at: saisunder@eshwars.com

Shyamolima Sengupta is a senior associate in the IP rights practice at Eshwars. She can be contacted at: shyamolima@eshwars.com