When you file a trademark in India you make a choice: claim actual use, or file on a “proposed to be used” (intent-to-use) basis. Unlike the US, India does not require proof of use before registration — but the basis you choose shapes your position for years afterward.
The two bases
- Claiming use. You assert the mark is already in use in India from a stated date. The claim must be bona fide and supported by documentary evidence; the Examiner may require an affidavit of use.
- Proposed to be used. You file on a genuine intent to use the mark in future. No current use is asserted.
The catch with “proposed to be used”
A proposed-to-be-used registration carries a condition: if there is no use within five years of registration, the mark is vulnerable to cancellation for non-use. In practice the Registry rarely acts on its own — but a third party often files for cancellation, especially when your mark is cited as an obstacle to their application.
Getting the user date right
If you filed proposed-to-be-used but the mark was actually already in use, you can apply to amend the user date — but only where the actual first use predates the filing date. If use began after filing, you cannot amend; you must file a fresh application claiming use.
Why the basis matters in litigation
This is the strategic heart of it:
- A proposed-to-be-used registration puts the burden on the plaintiff to establish that the mark is used in India when suing for infringement.
- A registration with use shifts the burden to the defendant to show the plaintiff is not using the mark.
Claiming genuine use, where you can support it, gives you the stronger hand.
What counts as “use” — a wide view
Indian courts read “use” broadly. Illustrative authorities:
- N.R. Dongre v. Whirlpool — advertisements in magazines, newspapers and television circulated in India amounted to use, and built trans-border reputation, even without goods on the Indian market.
- Uniply Industries v. Unicorn Plywood — even small prior sales, promotional gifts or experimental marketing can establish prior use; the test is not just volume but public knowledge of the mark.
- J.N. Nicholas v. Rose & Thistle — use “does not postulate actual sale”; advertisement alone, even without goods, can be use.
- Ishi Khosla v. Anil Aggarwal — use of a mark on the internet can amount to use in India.
- George V Records v. Kiran Jogani — trans-border reputation from international press circulating in India protects the owner.
Courts take a balanced view, focusing on the party’s bona fide intention to use the mark.
Practical guidance
- If you are genuinely using the mark, claim use — and keep the evidence. It eases enforcement and resists non-use attacks.
- If you are not yet using it, file proposed-to-be-used — but plan to begin genuine use within five years.
- Get advice before filing; the basis is a strategic decision, not a formality. See our filing a trademark in India guide.
Frequently asked questions
Do I need to prove use before registering a trademark in India? No. Unlike the US, India does not require proof of use before registration — but a use claim must be bona fide and evidenced if questioned.
What is the risk of a “proposed to be used” registration? If the mark is not used within five years of registration, it is vulnerable to cancellation for non-use, often at a third party’s instance.
How does the filing basis affect an infringement suit? A use-based registration shifts the burden to the defendant to prove non-use; a proposed-to-be-used registration leaves the burden on the plaintiff to prove use.
Can I change the user date later? Only to a date that predates the filing. If use began after filing, you must file a fresh application claiming use.
Useful official resources
- The Trade Marks Act, 1999
- IP India trademark e-filing portal