India jurisdiction report: What constitutes use of trademarks?

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;