If a trademark application has been filed on an intent-to-use basis without being aware of the fact that the trademark is already in usage in India, an application can later be filed to amend the date of usage and put in the actual date of the use of the mark. This is however permitted, only when the user date is prior to the date of filing of trademark application in India. In cases of subsequent user date, a fresh application will need to be filed.
“Use” of the trademark in India
The Trade Marks Act, 1999 defines the “use” of a mark as regards its use upon, or in any physical or in any other relation whatsoever, to such goods and/or services as represented under the mark. In India, the term “use” has been rendered a broad interpretation, with the Supreme Court of India in a 2003 ruling emphasizing that,“use” must be “material” even though it is “non-physical” (as held in Hardie Trading v. Addison Paints).
Establishing “Use of Mark” for an Intent-to-Use Application
The primary thing to remember is bona fide use of the mark after demonstrating bona fide intention in an intent-to-use application; where there has been no use of the mark in respect of the relevant class(s) of goods/services for a continuous period of 5 years, up to 3months before the filing of the application by the aggrieved person, this would amount to non-use and thus, liable for rectification/cancellation.
If the proprietor has resorted to aggressive advertising measures through magazines, newspapers, television, video films, cinemas circulated and made available in India even without existence of goods in the Indian market, it amounts to use of the trademark in India, especially since it had acquired trans-border reputation. This was so held in Whirlpool Case N.R. Dongre And Ors. vs Whirlpool Corpn. And Anr. In this case, actual sales were not required and a case was made based on limited sales to US Embassy and US ATO in India.
Intention to use the mark can thus, be demonstrated in the promotional measures employed to enable the mark to reach the masses, though it may not have been manufactured yet.
A valid test to prove “bona fide intention” to use the mark may be established through product samples supplied by the proprietor of the trademark to another with a view to establishing a trade channel. That channel may be an agency or a wholesale purchase for supplying goods to the market and can be an indicator of the source of such goods/services. Also it is important that such intention be with respect to trading use and not experimental purposes, as was held in the case of Mac. Laboratories Private Ltd. vs. American Home Products (AIR 1969 Cal 342).
So merely furnishing samples as documentary evidence will not suffice; the nature, quality and purpose of samples must be taken into account for determining bona fide intention to use the proposed trademark.
To establish use of the mark for an intent-to-use, it is extremely important to ascertain the strength of your mark at the very outset; it will have greater chances of being registered so you can then “tool up” and build on it.
Start-ups and budding entrepreneurs usually downplay the legal side of most business-related activities in India, either out of ignorance or over-confidence. Though laws in India are not as stringent on this front, it would pay to take a leaf out of the US Trademark system and be vigilant about proposed trademark registration and the entire gamut of procedures associated with the same, so as establish one’s mark with greater conviction.
To establish use, there must be concrete plans in place to commercialize all claimed goods and services under the mark, and must be followed through via research and product development, preparation of promotional materials, furnishing documentary evidence of such intent-to-use with the help of product prototype photographs and other product specifications, as well keeping a written record or minute of all related meetings (either internal board meetings or those with potential investors as well measures taken to secure governmental approval. Wide-ranging and comprehensive trade mark searches conducted weeks or months prior to the filing the application is also an indicator that the proprietor is serious about the proposed trademark. Evidence, wherever furnished, must be objective and not subjective and must show “circumstances” that substantiate such good faith applications.
The proprietor should make sure he does not apply to too many classes of goods/services than he can reasonably produce, as this can seriously hamper the bona fide intention on which the intent-to-use application is based.
With India stepping up to match pace with other countries on the IP front, guidelines and criteria for establishing “intention to use” may just get stricter, as happened in the Honda v. Winkelmann case, wherein, an added requirement of “existence of an ability and willingness to use the mark in the United States to identify [the goods in the application] at the time of the filing of the application” was held as necessary for demonstrating “circumstances showing good faith.”
So the best way to establish use of mark in an intent-to-use application would be to remain vigilant and prepared on all fronts that may arise in future as regards the said bona fide intention.