Concept of USE of a trademark in India – Frequently Asked Questions

The “USE” of a trademark in India plays a very important role in obtaining the registration of a trademark in India, prevail in opposition proceedings and to effectively enforce the rights of the trademark in India. In this post, we will provide answers to the frequently asked questions with respect to the “use” of a trademark in India.

1. What is ‘use’ of a trademark in India?

The common notion associated with ‘usage’ under the trademark law is the use of the trademark in respect of goods which are physically present or seen. Although this is correct, it is not the only manner a trademark can be used. There are many other acceptable ways a trademark can be used. Thus, the term “use” has evolved over time through judicial precedents and has come to be accepted by the Indian Trade Marks Office as well.

2. Is it necessary to claim ‘use’? How important is it to claim ‘use’?

In India, common law supersedes codified law and for this reason, ‘use’ of the trademark in India becomes pivotal in claiming rights over a trademark in India. Where a person/business uses a trademark even prior to a registrant, the said person assumes ownership over the mark being a prior user. The catch would, however, be the substantiation of such use earlier to that of the registrant, which is why it is also advisable to file and obtain registration for the mark.

Claiming ‘use’ also becomes relevant when the trademark application is examined and similar or identical marks are cited in the Examination Report. A ‘prior user’ would be able to overcome the objections of similarity if they are able to establish and prove beyond reasonable doubt their ‘prior use’ or ‘first use’ in the line of business. Same holds good in an opposition proceeding where If ‘prior use’ is displayed with sufficient and coherent evidence, these proceeding would tend to naturally favour the ‘prior user’, all other terms being equal.

On the assumption that ‘use’ is established, the common law permits and supports the ‘prior user’ of the trademark, even if it is identical or similar to an existing registered trademark proprietor and for this reason claiming the use of the mark in India, while filing a trademark application, becomes necessary and important..

3. What is an Affidavit of use or User Affidavit?

When a trademark application is filed in India claiming ‘use’, it is mandatory under the Trademarks Act, to file an Affidavit of Use or simply put a User Affidavit (hereinafter referred to as ‘User Affidavit’). This is basically an oath made in writing, wherein the Applicant of the trademark put forth that the ‘usage date’, as claimed in its application, is true and exact and not a false date. While submitting the User Affidavit, it is also significant to submit documentary evidence showing usage from the date as claimed.

4. What kind of documents would be necessary to support an Affidavit of Use?

The following types of documentary evidence, including but not limited to, could be submitted as proof of use of the trademark in India:

1. Invoices/Bills/Vouchers with respect to business activities carried in India.
2. Contracts or Agreements with Indian entities.
3. Details of total sales to customers in India.
4. Sign-ups by Indian customers.
5. Advertisements/marketing/promotional materials of the trademark in India.
6. Coverage of the trademark in Indian media.
7. Web analytics showing Indian customers/traffic, or
8. Any such other document which would show the dissemination of the subject mark in India.

It is extremely important that any documentary evidence must contain the exact representation of the trademark and the specific date in order to claim usage from that date. For example, if the trademark is ‘ROOMIES’ for air coolers and air conditioners and the date of first use is September 1, 2000, then it is ideal to submit documentary evidence containing the trademark ‘ROOMIES’ and the date. Further, it is also advisable to submit documents that show continuous use since it is as important to establish that the trademark is continually used as it is to show use itself.

5. Is the physical presence of goods or services is required to claim the use of a trademark in India?

In the Easyjet trademark case, the Courts in India noted that the trademark “easyJet” was featured in several leading Indian publications such as “The Times of India”, “The Hindu” and “The Hindustan Times” and international magazines such as TIME, FORBES, ECONOMIST etc which are freely available in India. Additionally, several Management Research Centers have studied the business model and operations of the plaintiff and have authored reports and case studies on the same. Accordingly, the Court held that “physical presence of the goods/services bearing/under the trademark in India is not required to claim the use of your trademark in India”.

6. What if there is no physical use of the trademark in India but there are use and popularity globally?

There is a possibility that a mark is extremely popular worldwide in many countries while is new or has not acquired such reputation and popularity in India. It is significant to note that the Indian Trademark Law has afforded protection and made reservations to such marks enjoying trans-border reputation. This is basically ‘an exception’, to the ‘prior usage’ concept, which came about because of the landmark judgment in the case of N.R. Dongre and Ors. V. Whirlpool Corporation and Anr. [Appeal (civil) 10703 of 1996], where the Hon’ble Apex Court held that the trademark ‘WHIRLPOOL’ had acquired enormous trans-border reputation and goodwill due to wide promotion and advertisements and thus, was associated with the Whirlpool Company only, despite no notable or actual sale was seen in India. This case set in motion the concept of trans-border reputation and started to become an exception where trademarks with no actual usage of the mark in India, could claim ‘use’ and protection based on their use, reputation and popularity outside the territory of India.

While few other cases that followed re-enforced the decision of the Whirlpool case and trans-border reputation was a totally accepted concept without many reservations, the judgement in the case of  Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Limited set the ball rolling in the opposite direction, with the Hon’ble Supreme Court asserting the necessity of native use when claims of trans-border reputation were made.

6. If filed on a proposed to be used basis, is it necessary to show use anytime thereafter?

Unlike countries like the United States of America, as per the Indian Trademark Act, there is no necessity to establish use thereafter if the trademark is filed on a proposed to be used basis. There is no hard and fast rule that usage must be shown after filing the application. However, where subsequent to the application, the mark is indeed used, it is advisable to file an affidavit of use, so that if there are any objections to the acceptance, the proof of use of the mark showcases the bonafide intent of the Applicant in respect of the said trademark and also shows that the mark is significant to the Applicant which might help in overcoming the objection.

On the other hand, filing documents of use may also avert future actions like oppositions/cancellations (especially for non-use) where it may become clear to a third party intending to act against, that the mark has genuine use. The trademark registration is also open to cancellation if not in use for a period of 5 years.

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