What constitutes usage of trademarks in India? – Insights from a trademark law and practice perspective – Eshwars
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What constitutes usage of trademarks in India? – Insights from a trademark law and practice perspective

[First published in World Intellectual Property Review on 19th September 2019. To read Article in WIPR click here]

MR. N V SAISUNDER

PARTNER – IPR & TECHNOLOGY LAW PRACTICE

MS. SHYAMOLIMA SENGUPTA

SENIOR ASSOCIATE – TRADEMARK & COPYRIGHT PRACTICE

Background and recognition of “first-to-use” principle

Indian trademark law follows the “first-to-use” principle and accordingly the rights of prior user of a trademark is recognised to be superior to that of a registered proprietor and even registered proprietors cannot interfere with the rights of an unregistered prior-user. This has been re-asserted by Indian courts in several judgements from time to time.

While undoubtedly a registered proprietor in India, enjoys exclusive rights over his trademarks and such registration also affords protection against counterfeiting and infringement, however, 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 Trademarks Act (the “Act”), an applicant, of a trademark, is required to establish continuous usage of the trademark by submitting an usage affidavit along with evidence such as – advertisement, publicity materials, trade evidences, customer feedback, testimonials, etc.

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

Judicial take-on what constitutes usage of trademarks

Courts and Tribunals in India have interpreted usage of trademarks in their various judgments, and an indicative list of what is considered as usage of trademark is provided hereinbelow:

  • Actual usage on goods and services;
  • When there is no actual use on goods or its sale, any promotional material can be construed as use;
  • In Hardie Trading Ltd. vs Addison Paint and Chemicals Ltd., the Hon’ble Supreme Court in 2003 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.
  • Use of one of the associated trademarks equivalent to use of another;
  • Use of trademark for export trade as given;
  • Use of trademark by a registered user or through licensing;

However, an exception to the “first-to-use” principle is the doctrine of “Recognition of Well-known Trademarks”. In the landmark judgement of N.R. Dongre and Ors. Vs. Whirlpool Corpn. and Ors., the Supreme Court in 1996 recognised 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 5 years from the date on which the trademark is entered in the register of trademarks (the “Register”), 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 on a proposed to be used basis in India, it is imperative to commence using the trademark at the earliest to avoid such removal from the Register for non-use.

Conclusion

Thus, trademark protection in India requires owners to continuously use their trademarks by maximising their promotion and advertisement through all platforms. Most importantly, such continuous usage of trademarks also helps in protecting trademarks so as to ensure easier enforcement against infringement and counterfeiting.

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