Filing a trademark application in India – Should it be filed on a proposed to be used basis or claiming usage?

An application for registration of a trademark in India can be filed by either claiming use of the trademark in India or on a proposed to be used (intent to use) basis. Subsequent to publication and in the absence of opposition the application would proceed towards registration. Unlike in the US, proof of usage of the mark in India is not a pre requisite to the grant of registration of the trademark. The usage claimed in the application needs to be bona-fide and supported with documentary evidence of usage and if necessary the Examiner might insist that an affidavit of usage be filed.

When the application is filed on a proposed to be used basis the proprietor of the trademark should have a bona fide intent to use the mark in the future and if there is no usage of the trademark within 5 years from the date of registration, the trademark registration is subject to cancellation on the grounds of non-usage. In practise unfortunately the trademark office rarely takes suo-motto action to enforce this rule but it is often the third party who files a petition for cancellation of a trademark registration on grounds of non-usage especially when the subject mark is cited as an objection to the third party’s mark proceeding towards publication.

When trademark application in India is filed on a proposed to be used basis without knowing that the trademark is already used in India an application to amend the date of usage can be filed to include the actual date of usage of the mark in India. However the Indian law allows amendment of the user date only when the same is prior to the date of filing the application in India. In the event the date of usage in India is subsequent to the date of filing the application in India, then a fresh application needs to be filed claiming usage. A registration on a proposed to be used basis, puts the burden of proof of establishing that the mark is used in India upon the plaintiff when a suit for infringement is initiated, whereas a trademark registration with usage makes this task easier and shifts the burden of proof upon the defendants to establish that the plaintiff is not using the mark.

What actually is “USE” of the trademark in India?

The Indian Trademarks Act, 1999 defines the “use” of a mark in reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods and in respect of services to the use of the mark as or as part of any statement about the availability, provision or performance of such services.

The Indian Courts have time and again interpreted the term “use” or “usage” of a mark in India giving it a wider meaning.

In the Whirlpool Case N.R. Dongre And Ors. vs Whirlpool Corpn. And Anr. the Court held that the advertisements in magazines, newspapers, television, video films, cinemas circulated and made available in India even without existence of goods in the Indian market amounts to use of the trademark in India in addition to the mark Whirlpool acquiring trans-border reputation in India. Whirlpool did not make out a case of actual sales in India but had limited sales to US Embassy and US ATO in India.

In Uniply Industries Ltd vs Unicorn Plywood Pvt. Ltd. &Ors  it was observed that even prior small sales of goods with the mark have been sufficient to establish prior use. Bona-fide test of marketing, promotional gifts and experimental sales in small volume may also be sufficient to establish a use of the mark. At times the Courts have also not taken into consideration such sales being so small. So the test to determine usage needs to be not just the volume of sale but also the extent of knowledge of the public about the mark.

In JN Nicholas Ltd vs Rose & Thistle it was held that “The user of the mark does not postulate actual sale of the goods bearing such mark, user can be in any form or way and does not necessarily mean and imply actual physical sale and even mere advertisement without having even the existence of the goods can be said to be an user of the mark.”

The question of whether the use of the mark on the internet amounts to usage in India was answered in the positive by the Hon’ble Delhi High Court in Ishi Khosla vs Anil Aggarwal & another.  The Court observed “In a modern world where information is a key factor and the information is available with the click of a mouse on a computer from the internet, its an era of expansion. In today’s world an `idea’ which may be unique and ‘out of box’ can click and become popular overnight and within no time”

In George V. Records, Sarl vs Kiran Jogani And Anr  held that the rights of the trademark owner needs to protected when the trademark has acquired spill over reputation or trans-border reputation by virtue of of news items, articles, pictures, interviews and write up in several international newspapers such as Time Magazines, New York Times, The Times, Evening Standard, PS Magazine, Detroit News and Fees Press, Daily Heralds, Las Vegas Review Journal having wide circulation abroad and in India.

The Courts have taken a more liberal approach to the term “use” in respect of some industries such as pharmaceuticals. Use of the mark in specific websites visited by persons of specific interest, in LEXISNEXIS search databases are in clinical trials have been held to be sufficient use to assert rights against subsequent adopters of the same mark in India.

In most of the cases the Courts have always taken a balanced view on the rights of the parties and looked in the intention of the party to use the mark in India and whether such usage has been bona-fide.

Usage of the trademark plays a very important role in your trademark protection strategy in India. It is important to take proper legal advice and have a strategy before deciding on filing a trademark application in India.