Malcolm Rivera
India follows a first-to-use principle, which means that prior use takes precedence over earlier registration. This makes the question of what constitutes the use of a trademark in India of vital importance to both domestic and international clients seeking to register their trademark and protect it from infringement. The law is clear that a series of advertisements, promotions, or communications do not constitute use. However, the Supreme Court has held that actual use on goods and services is not necessary to define use as far as trademarks are concerned.
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What You'll Learn
Promotional material and advertisements
Promotional materials and advertisements are an important aspect of trademark use in India. India follows a first-to-use principle, which means that prior use of a trademark takes precedence over earlier registration. This highlights the significance of understanding what constitutes trademark use in promotional contexts.
The Supreme Court of India, in the case of Hardie Trading vs Addison Paints and Chemicals (2003), provided clarity on this issue. The Court held that actual use of trademarks on goods and services is not necessary to constitute trademark use. Instead, any promotional material or advertisement can be construed as trademark use. This includes the use of the mark in relation to goods, either physically on the goods or otherwise related, without being limited to the physical application.
For instance, manufacturers and service providers in India often claim trademark use through promotions and advertisements across various platforms. These can include the internet, magazines, print media, social media, and even letterheads or attendance registers. However, it is important to note that merely advertising a product or service does not constitute trademark use. The law in India specifies that placing goods in the market or rendering services under the trademark after such promotions is what ultimately establishes trademark use.
When incorporating trademarks in promotional materials and advertisements, it is crucial to acknowledge trademark ownership. This can be done through disclaimers or footnotes clarifying that the use of a trademark does not imply ownership or endorsement. For example, a statement like "Windows® is a registered trademark of Microsoft Corporation" respects Microsoft's trademark rights and avoids confusion about endorsement or partnership. Additionally, trademarks should be used as adjectives modifying nouns, not as nouns or verbs.
Furthermore, advertisers should be cautious when incorporating user-generated content (UGC) from social media into their marketing campaigns. Any trademarks present in UGC should be used according to nominative fair use principles and not in a broad promotional manner. This ensures compliance with trademark law and avoids potential infringement issues.
In summary, while promotional materials and advertisements can be considered trademark use in India, it is essential to understand that actual use or placement of goods and services in the market is also necessary. Additionally, proper acknowledgement, respectful use, and adherence to legal principles are key when incorporating trademarks into promotional contexts.
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Registration and protection
India follows a first-to-use principle, meaning that prior use takes precedence over earlier registration. The Trademark Act, 1999 of India does not provide a specific definition of trademark use, but it does state that a trademark registration cannot be refused if, before the application date, it has acquired a distinctive character as a result of its use or is a well-known mark.
The registration process in India considers the following factors when determining a trademark's well-known status:
- The knowledge or recognition of the trademark by a relevant section of the public in India.
- The duration, extent, and geographical area of any use of the trademark.
- The duration, extent, and geographical area of the trademark's promotion, including advertising, publicity, and presentation at fairs or exhibitions.
- The duration and geographical area of the trademark's registration or any pending registration applications.
- The trademark's successful enforcements, specifically the extent to which it has been recognised as a well-known mark by any Indian court or Registrar.
The official fee for online filing of a trademark application in India is 4,500 Indian rupees (approximately US$55) for individuals, start-ups, and small enterprises, and 9,000 Indian rupees (approximately US$105) for companies. The registration process usually takes between six and ten months, and the trademark remains valid for ten years from the filing date, with the option to renew it indefinitely.
It is important to note that unregistered trademarks are also protected in India under common law. Trademark rights for unregistered trademarks can be established through passing-off actions by substantiating the trademark's use in India. Indian courts consider the following factors in passing-off actions:
- The unregistered trademark's prior use, goodwill, reputation, acquired distinctiveness, and exclusivity.
- Misrepresentation of the origin of the goods and services caused by the conflicting trademark and the likelihood of consumer confusion.
- Any injury suffered or likelihood of injury to the unregistered trademark's owner as a result of the misrepresentation.
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Common law and passing off
In India, unregistered trademarks are protected under common law and the law of passing off. This is because, in India, the right to have a mark registered is not dependent on the actual use of the mark at the time of registration.
The law of passing off in India seeks to protect the goodwill associated with unregistered trademarks. Passing off is a common-law tort that occurs when a person sells their products as the goods of another, and the trademark owner can take legal action to remedy this violation. This idea was developed in the seminal English case of Perry v Truefitt (1842), where the Court held that "a man is not to sell his own goods under the pretense that they are the goods of another man".
The Indian Trademarks Act, 1999 does not define passing off, but Section 27 recognises the common-law rights of a trademark owner to initiate legal proceedings against any person for passing off goods or services as those of another. Passing off occurs when there is illegal use of a trademark or trade name, misleading the public into believing that the products or services supplied by one party are those of another. This misrepresentation can harm the goodwill and reputation of the legitimate trademark owner, causing consumer confusion and diluting the distinctiveness of the original trademark.
The Indian courts consider the following factors in passing-off actions: the unregistered trademark's prior use, goodwill, reputation, acquired distinctiveness and exclusivity; misrepresentation of the origin of the goods and services caused by the conflicting trademark and the likelihood of consumer confusion; and any injury suffered or likelihood of injury to the unregistered trademark's owner as a result of the misrepresentation.
It is important to note that establishing passing off can be challenging, as claimants must demonstrate the possibility of public misunderstanding about the origin of the products or services.
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Classification of trademarks
In India, trademarks are classified into 45 distinct classes, depending on the nature of the goods and services they represent. This classification system is crucial for organising trademarks efficiently and ensuring that products and services with similar characteristics are categorised together. It also helps in the trademark search process and prevents infringement.
The Nice Classification system, established in 1957 and revised subsequently, is an international standard for classifying goods and services in trademark registrations. It provides a standardised framework for categorising products and services worldwide. India adopted this system in 2019, making it the official classification used by the Indian Trademark Office.
The 45 trademark classes can be further divided into two main categories: goods and services. Classes 1-34 belong to products, while classes 35-45 are for services. Raw materials or semi-finished products are classified based on the material they are made of, and if the product is made of multiple materials, it is classified based on the predominant material.
Some examples of trademark classes include:
- Trademark class 29 consists of poultry, meat, fish, preserved, frozen, dried, and cooked vegetables and fruits, jams, jellies, compotes, fats, and edible oils.
- Trademark class 31 includes aquaculture, horticulture, raw and unprocessed agricultural seeds and grains, natural plants and flowers, live animals, and fresh herbs.
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Rights of trademark owners
India follows a first-to-use principle, meaning that prior user takes precedence over earlier registration. This is important for both domestic and international clients filing for registration and/or seeking protection against infringement. The Trademark Act, 1999, governs registered trademarks, while unregistered trademarks are primarily governed by common law rules.
The rights of trademark owners in India include:
- The right to exclusive use of the trademark in relation to the specific goods or services for which it is registered.
- The right to seek legal remedies against infringement, including injunctions, damages, or accounts of profits from infringers.
- The right to assign or transfer trademark rights to another party. This typically involves executing a legal agreement or deed of assignment, transferring ownership of the trademark from the assignor to the assignee.
- The right to prevent third parties from using an identical or deceptively similar trademark.
- The right to use markings such as the registered ® symbol and the letters 'TM' to indicate trademark status. However, using the ® symbol for unregistered trademarks is an offence punishable by imprisonment and/or a fine.
- The right to obtain statutory remedies, as the Trademark Act provides for the rights acquired by registration, modes of transfer and assignment of rights, nature of infringements, and penalties for infringement.
It is important to note that the registration of a trademark in India is a costly and time-consuming process, but it offers valuable rights and long-term protection to trademark owners.
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Frequently asked questions
The use of a trademark in India is constituted by the placing of goods in the market or the rendering of services under the trademark after promotions and advertisements. The Hon'ble Supreme Court and other High Courts in India have emphasised that actual use on goods and services is not necessary to define "use" as far as trademarks are concerned.
The types of trademarks that may be registered in India include:
- Any name, including the personal or surname of the applicant or predecessor in business or the signature of the person.
- An invented word or any arbitrary dictionary word(s), not directly descriptive of the character or quality of the goods/service.
- Sound marks, shape marks, colour marks, image marks, architectural marks, etc.
- 3D marks.
The official fee for online filing applicable to individuals, start-ups and small enterprises is 4,500 Indian rupees (approximately US$55). For companies, the fee is 9,000 Indian rupees (approximately US$105).
A trademark registration in India is valid for 10 years from the date of filing of the application. It can be further renewed indefinitely.
The owner of a registered trademark can exercise his legal rights in case of any infringement with regard to the owner's logo, brand, or slogan. The owner has the right to sue any third party that uses the trademark without prior permission. Indian courts also recognise passing off as a remedy under common law to protect the goodwill attached to unregistered trademarks.
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