Must a trademark physically appear on goods sold in India to count as “used” here? Indian courts have repeatedly said no — advertising, price lists, websites and even reputation built abroad can all be “use.”
The narrow view — and why it’s wrong
The instinct is that “use” means the mark physically on goods on the Indian market. The case law rejects that literalism in favour of a broad, purposive reading.
The key authorities
- Hardie Trading v. Addison Paint & Chemicals (Supreme Court) — held that “usage could be ‘other than physical,’” and that marks appearing in promotional materials and price lists are valid use.
- Easy Group IP Licensing v. easyJet Aviation (Delhi High Court) — recognised website traffic, advertisements and media coverage as sufficient use, even without physical goods in India.
- N.R. Dongre v. Whirlpool (Supreme Court) — a mark can acquire substantial trans-border reputation through promotion and advertising, regardless of actual sales in India.
- Kamal Trading Co. v. Gillette U.K. (Bombay High Court) — “goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available.”
What “use” therefore includes
- Advertising and promotion referencing the mark;
- Price lists and business documents bearing the mark;
- Online presence — a website accessible in India, digital traffic, media coverage; and
- Trans-border reputation spilling into India through international media.
Why it matters
- Prior use, broadly evidenced, wins rights. In India’s common-law system, a prior user can prevail even over a later registrant — and “use” is generous enough to capture non-physical activity.
- Global brands are protected before they arrive. Reputation built abroad and known in India can ground rights, so an entrant should clear against famous foreign marks.
- Build the evidence. Keep advertising, price lists, web analytics and media coverage — they are all potential proof of use. (See our FAQs on use of a mark and proof of use in hearings.)
Frequently asked questions
Does “use” of a trademark in India require physical goods on the market? No. Courts read use broadly — advertising, price lists, websites and trans-border reputation can all constitute use.
Which case established non-physical use? Hardie Trading v. Addison Paint held that use could be “other than physical,” including promotional materials and price lists.
Can a foreign brand have rights in India without selling here? Yes — through trans-border reputation, as in N.R. Dongre v. Whirlpool and Kamal Trading v. Gillette.
What evidence shows use? Advertising, price lists, media coverage, and web analytics/online presence directed at or accessible in India.
Legislation referred to
- The Trade Marks Act, 1999