In order to establish distinctiveness and/or priority for registration purposes, as well as for purposes connected to proving prior use and/or acquiring distinctiveness, one must demonstrate usage of a trademark in India. Prior use takes precedence over an earlier registration for trademark registration in India. India adheres to the first-to-use rule.

Therefore, the topic of what constitutes use of a trademark in India is crucial for both domestic and foreign customers who are registering their trademarks and/or seeking protection from trademark infringement.

What does the Indian Trademark Law say

The "first-to-use" principle is applied in Indian trademark law. As a result, it is acknowledged that a prior user's claim to a trademark is superior to a registered owner's. An unregistered prior user's rights cannot be interfered with by anyone, not even registered proprietors. Indian courts have often reaffirmed this in rulings over the years.

To claim protection and exclusivity, the element of "use" of trademarks is crucial not just for registration but also enforcing the rights of an individual over infringing marks or when defending any petition for cancellation filed against a trademark for alleged non-use. This is true even though a registered proprietor undoubtedly enjoys exclusive rights over a trademark and that tm registration also provides protection against infringement and counterfeiting.

Let’s dive deep into the important aspects of trademark usage from the judicial and legal perspective.

Relevance of Usage in Trademark Prosecution
 

According to the Trade Marks Act, the applicant for a trademark must demonstrate ongoing use of the property by providing a usage affidavit and supporting documentation, including commercials, trade evidence, promotional materials, client feedback, testimonials, etc.

The submission of usage-related documents aids in proving not only the owner's legitimate and prior usage rights over the trademark but also the distinctiveness the trademark has gained, strengthening the case for trademark registration.

Judicial Definition of What Constitutes Trademark Usage
 

Actual use of goods and services has not been required to define "use" in terms of trademarks, according to the Hon'ble Supreme Court and various High Courts in India.

In Hardie Trading v. Addison Paints and Chemicals (2003), the Supreme Court unequivocally declared that any promotional material might be interpreted as usage and that actual use of the trademarks on the products and services is not required to constitute use.

The Supreme Court came to the conclusion that the “use of a mark in regard to the goods is to be considered as a reference to the usage of the mark upon, or in any physical, or in any other relation whatsoever, and is not necessarily limited to physical use on goods or to the sale of goods bearing the trademark”. This was the conclusion reached by the Supreme Court in the same case after analysing various aspects of "usage" under the Trademark Act, 1999.

Many people will find the above to be a welcome note. Service providers and manufacturers are increasingly promoting their goods and services even before the general public decides to buy them due to the development in technology, the internet, and the simplicity of advertising.

When a promotion starts, trademark owners frequently submit their marks for registration before the commodity or service is made available for purchase. Due to COVID-19 lockdowns around the world, manufacturers and service providers have progressively offered their products and services online during the past year. Massive sales of goods and services have resulted from the constant advertising on the internet.

Risks Associated with Not Using Trademarks
 

Even though it could seem like a formal requirement during trademark prosecution, proving trademark usage becomes more important throughout enforcement and cancellation procedures involving such trademarks.

Due to the fact that under section 47 of the act, if a trademark is not continuously used for a period of five years after the date on which the trademark is entered in the Register, such trademark registration may be removed from the Register for non-use, based on an application by a third party, the importance of continuous use of a trademark is increased.