Trademark Use in India: 7 Powerful Reasons Your Brand Could Fail Without It

In both India and the US, trademark rights hinge not just on registration but on genuine, documented use. A recent US court decision denying protection to a color mark highlights the steep evidentiary burden for non-traditional trademarks—an issue mirrored in Indian law. Under India’s Trade Marks Act, 1999, registration can be based on proposed use, but if a mark isn’t genuinely used within 5 years and 3 months, it risks cancellation under Section 47. Indian courts stress that token use, internal testing, or vague marketing won’t suffice—real, public-facing commercial engagement is key. Use by licensees or distributors is acceptable if properly structured and documented.

The burden of proving use lies on the trademark owner, with affidavits and concrete evidence like invoices, advertising, and packaging playing a critical role. Non-traditional marks like colors face a particularly high bar, requiring proof of acquired distinctiveness among Indian consumers. For Indian businesses aiming for long-term brand protection, regular documentation, early market entry, and aligned global strategies are essential. Ultimately, use—not just registration—is what secures and sustains trademark rights.

Trademark Use in India: 7 Powerful Reasons Your Brand Could Fail Without It

A recent US Federal Circuit decision sent ripples through the trademark world. The court denied protection for a specific shade of dark green used on medical gloves, citing insufficient proof that consumers recognized the color as a brand identifier. This high bar for non-traditional marks like colors underscores a fundamental truth often overshadowed by the rush to register: trademark rights are ultimately built on use, not just paperwork. 

This US ruling resonates powerfully in India. While our Trade Marks Act, 1999, offers the welcome flexibility of filing based on “proposed use” (Section 18), the long-term health and enforceability of a trademark hinge entirely on genuine commercial exploitation. Let’s dissect the Indian landscape of “use,” drawing insights from judicial wisdom and contrasting it with the US perspective. 

The Statutory Dance: Registration vs. Retention 

• Getting In (Registration): Unlike some jurisdictions, India doesn’t demand proven prior use for filing. You can file based on existing use or a bona fide intention to use (Section 18). This facilitates market entry for new ventures. 

• Staying In (Retention): Here’s where “use” becomes paramount. Section 47 is the gatekeeper: a registered mark faces cancellation if not genuinely used in India for a continuous period of 5 years and 3 months post-registration. Registration grants initial rights; use sustains them. 

What Constitutes Real “Use” in India? Courts Weigh In 

Indian courts have moved beyond simplistic notions of mere sales volume. They seek evidence of bona fide commercial engagement aimed at the public. Key principles emerge from landmark rulings: 

• Beyond Tokenism: The Supreme Court in Ramdev Food Products (2006) made it clear: registration alone isn’t a monopoly shield. “Token use” – minimal, insincere activity – won’t suffice. Use must reflect a genuine market presence or a demonstrable, concrete intention to create one. 

• Scope of Activity: It’s not just sales. The Supreme Court in Neon Laboratories (2016) acknowledged that advertising and promotion can constitute “use,” provided it’s significant, public-facing, and reaches the relevant consumer base. Internal documents or R&D prototypes? Almost certainly not (Tata Sia Airlines, Delhi HC 2023). 

• Commercial Reality: The Hardie Trading (2003) decision recognized modern business models. Use by licensees or authorized distributors (properly documented) satisfies the requirement, protecting the goodwill generated through legitimate channels. 

• Geographic Imperative: For statutory protection under the Act, the use must be in India. Cross-border reputation aids passing-off actions, but Section 47 demands domestic use. 

Proving Your Case: The Evidence Imperative 

When “use” is challenged (in opposition, cancellation, or infringement suits), Rule 25 of the Trade Marks Rules, 2017 empowers the Registrar to demand an Affidavit of Use. This isn’t a mere formality. Effective affidavits include: 

• Precise date of first use in India. 

• Specific goods/services involved. 

• Clear description of the manner and extent of use. 

• Concrete Evidence: Invoices, shipping documents, advertising samples (print/digital), brochures, website snapshots, licensee agreements, press coverage, consumer surveys (for distinctiveness). 

The High Bar for Non-Traditional Marks: Color as a Case Study 

India’s law theoretically permits registering colors, sounds, and smells (Sections 2(1)(m) & 2(1)(zb)). However, the reality for single colors or combinations is strikingly similar to the recent US green gloves case. 

• Inherently Non-Distinctive: Colors are primarily decorative or functional. Courts start from the presumption they lack inherent distinctiveness. 

• Acquired Distinctiveness is Key: The applicant bears a heavy burden to prove that, through long, exclusive, and consistent use, the relevant Indian public primarily associates that specific color with their goods/services as a source identifier. 

• The Colgate Palmolive Precedent: The Delhi High Court (2003) famously denied exclusive rights over a red/white toothpaste stripe combination, emphasizing colors need exceptional proof of acquired distinctiveness. 

• Trademark Manual Guidance: The Indian Trademark Office explicitly states single colors face an uphill battle, requiring “exceptional evidence.” 

The Price of Inaction: Consequences of Non-Use 

Section 47 is the remedy against “trademark squatting” or neglect. If proven that either: (a) There was no bona fide intention to use the mark at registration, OR (b) There has been no genuine use for the statutory 5 year 3 month period, the mark becomes vulnerable to removal from the register. This frees up the mark for others and nullifies your enforcement rights. 

India vs. US: A Comparative Lens on “Use” 

Practical Wisdom for Indian Brand Owners 

• Document Religiously: Treat evidence of use (invoices, ads, packaging, web archives) as critical IP assets. Maintain organized, date-stamped records from the start. 

• Avoid Speculative Filings: Only register marks you have a genuine, documented plan to use in India for the specified goods/services within a reasonable timeframe. 

• Mind the Gap (Proposed Use): If filing based on “proposed use,” ensure you launch and generate evidence well before the 5Y+3M non-use period expires. Don’t let the clock run out. 

• Licensing is Leverage, But…: Using distributors or licensees? Ensure iron-clad agreements specifying trademark use, quality control mechanisms, and your right to evidence. Their use is your use, but only if properly structured. 

• Non-Traditional Marks? Proceed with Caution: Pursuing a color, sound, or shape mark? Budget for significant, sustained market presence and comprehensive evidence collection (sales data, advertising spend, consumer surveys) from day one. Expect scrutiny. 

• Global Eyes: Expanding to the US? Understand their stricter “use in commerce” requirements upfront. Align your launch strategy with US filing timelines (e.g., Statement of Use deadlines for ITU applications). 

Conclusion: Use It or (Truly) Risk Losing It 

The recent US decision on color trademarks is a stark global reminder: trademark registrations are powerful tools, but they derive their ultimate strength from the marketplace, not the registry. Indian law, while offering a pragmatic entry point via “proposed use,” firmly anchors lasting rights in demonstrable commercial activity. 

The judiciary’s consistent message – from Hardie Trading to Tata Sia Airlines – is clear: “Use” means bona fide, public-facing trade in India. It’s about building genuine goodwill consumers recognize. For sustainable brand protection, both domestically and internationally, Indian businesses must move beyond the certificate on the wall and embed robust, documented commercial use into the core of their trademark strategy. The security of your brand’s identity depends on it.