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What Constitutes Trademark Use

India is one of the countries where one has to show use of a trademark in order to claim distinctiveness and/or priority for purposes of registration and for purposes related to establishment of prior user and/or acquisition of distinctiveness. For registration of trademark in India, prior user takes precedence over an earlier registration. India follows first-to-use principle Thus, the question what constitutes use of trademark in India is of vital importance to both domestic and international clients filing for registration of their trademark and/or seeking protection against any infringer of their trademark. The Trademark Act, 1999 of India does not specifically provide any particular definition of use of trademarks. Section 9 (proviso) provides that a trademark registration shall not be refused registration, if before the date of application, it has acquired a distinctive character as a result of use made of it or is a well-known mark. Section 34 provides for prior user. DO, the question that looms large is "what constitutes use of trademarks in India?" The Hon'ble Supreme Court and other High Courts in India have emphasized that actual use on goods and services is not necessary to define "use" as far as trademarks is concerned.

The Supreme Court Hardie Trading vs Addison Paints and Chemicals (2003) clearly held that it is not necessary that there should be actual use of the trademarks on the goods and services in order to constitute use and that any promotional material can be construed as use. The Supreme Court in the same case analyzed various aspects of "usage" under the Trademark Act, 1999 and arrived at the conclusion that the use of a mark in relation to goods is to be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever and does not necessarily be limited to physical use on goods or to the sale of goods bearing the trademark.

The above comes as a welcome note for many. The rise in the use of technology, internet and with the ease of advertising, it is becoming increasingly common for manufacturers and service providers to promote their products and services even before they are purchased by the public. Trademark owners often file marks for registration immediately when a promotion begins—that is, before the good or service is offered for sale.This has held true over the past year where manufacturers and service providers have increasingly sold their goods and services over the web owing to the COVID-19 lock downs all over the world. The incessant promotions over the web has led to gargantuan sale of goods and services over the world wide web.

The T.T.A.B in the year 2010 in Quantum Foods Inc. held that a website that displays the trademark, the product, and a means to buy the product has been held to be sufficient to establish use of the trademark in relation to the goods.

In India, use of one of the associated trademarks equivalent to use of another and use of trademark by a registered user or through licensing has also been defined as "USE" of a trademark.

The right to have a mark registered in India is not dependant upon the actual use of the mark at the time of registration as was held in Drums Food International (P) Limited vs Euro Ice Cream (2011).

The inherent problem that arises is that many manufacturers and service providers claim use through promotions and advertisements on the internet, magazines, print media, social media, communications through snail mail containing letterheads displaying the proposed trademark and even attendance registers but the actual use on goods services are delayed by years. It can be safely said that many manufacturers and service providers have abused the same. It may be a fact that the goods or service has been merely advertised but have not been placed in the market and/or have not been rendered. In order to address such a concern it is necessary that advertisements and promotions must be followed by consequent placing of goods and/or services in the market.

The Delhi High Court in 2009 in the case of Pioneer Nuts and Bolts (P) Limited vs Goodwill Enterprises held that mere issuance of an advertisement would not constitute a user of the mark. It was observed that otherwise the proprietor of a trade mark might, without having any goods to offer, advertise its marks at periodical intervals and thereby prevent any attack being made upon the mark. It was emphasized that "use of a mark in advertising media must be concurrent with the placing of the goods in the market if it is to be regarded as a trade mark". It was further held that the issuance of a series of advertisements as part of an introductory campaign may be use of the mark in the course of trade but "not upon the goods or in physical relation thereto. It was also held that the advertisements issued in the newspapers can hardly constitute the proof of service on the user of the mark from those dates. Likewise, the grant of a telegraphic address, or the soliciting of business, or the receipt of trade inquiries cannot by themselves satisfy the legal requirement of the defendant having to show that it used the marks, earlier than the Plaintiff did, in relation to goods.

Even in T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372 (Fed. Cir. 1996), the Federal Court in USA held that use can be shown if the advertising campaign or taking of orders for a product or service that will be launched in the market associates the mark and its corresponding goods in the minds of the consumer.

The law is pretty clear that a series of advertisements, promotions or communications, inquiries, soliciting business at regular intervals through print media or social media or any other means does not constitute use. What constitutes use is the consequent placing of goods in the market and/or rendering of service under the trademark after the advertisement, promotions, soliciting of business, communications through mails etc.


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