In a highly competitive marketplace, protecting a trademark goes beyond mere registration. Trademark owners—especially multinational companies—often seek to safeguard their marks even when they are not actively using them in a jurisdiction. Indian trademark law allows registration without immediate use, but it also imposes certain conditions to retain that protection. This article examines how Indian law deals with unused trademarks, the concept of defensive trademarks, and strategic approaches for global businesses to maintain their trademark rights in India.
Legal Framework for Trademark Use in India
The governing law for trademarks in India is the Trademarks Act, 1999. It allows a trademark to be registered even before it is used in India, provided there is a bona fide intention to use the mark in relation to the specified goods or services.
Key Provisions:
- Section 47 – Deals with removal of a registered trademark for non-use.
- Section 2(1) (zb) – Defines a “trademark” and recognizes both actual use and intention to use.
This blog is a part of our The Ultimate Guide to Intellectual Property Law Blogpost.
The Requirement of Use and Non-Use Cancellation
What is Non-Use Cancellation?
Under Section 47 of the Trademarks Act, a registered trademark can be removed from the Register if:
- It was registered without any bona fide intention to use, and there was no use of the mark up to a date three months before the cancellation request (Section 47(1)(a)); or
- There has been no bona fide use of the trademark for a continuous period of five years from the date of registration (Section 47(1)(b)).
Exceptions to Non-Use:
The Act carves out exceptions where non-use may be justified:
- Special circumstances in the trade, including restrictions on the use of the trademark imposed by law or regulation.
- In some cases, import restrictions, supply chain disruptions, or market-entry delays could be considered special circumstances.
Concept of Defensive Trademarks
What is a Defensive Trademark?
While the Trademarks Act, 1999 does not expressly mention “defensive trademarks”, the concept was recognized under the old Trade and Merchandise Marks Act, 1958 (specifically Section 47 of that Act), allowing well-known brands to register a mark for classes in which they were not actively using the mark, but where use by others would create confusion.
In practice today, the defensive trademark regime has been phased out under the 1999 Act. However, the underlying principle still plays a role in enforcement and strategy.
Modern Equivalent: Well-Known Marks
Under Section 11(2) and Section 11(6)-(9) of the current Act:
- A well-known trademark is protected across all classes, even if it is not registered or used in all of them.
- The Registrar has the power to declare a mark well-known upon application.
- Once a trademark is determined to be well-known, it enjoys defensive-like protection, preventing others from registering the same or similar mark in unrelated classes.
Multinational Companies and Non-Use Strategy
Challenges for Global Brands:
- Multinational companies often register trademarks in India to secure rights before market entry.
- Actual use may be delayed due to regulatory, logistic, or commercial reasons.
- This delay may lead to vulnerability under non-use cancellation if not strategically managed.
Strategies to Avoid Cancellation for Non-Use
Documenting Bona Fide Intention to Use
- Maintain records of market research, advertising campaigns, and communications showing intent to launch the brand in India.
- Business plans, import/export licenses, or distribution agreements may also support a bona fide intention to use.
Partial Use or Token Use
- Use in even a limited commercial capacity may suffice to maintain the registration.
- This includes:
- Launching small-scale e-commerce operations in India.
- Entering licensing arrangements with Indian distributors.
- Use of the mark on websites accessible from India.
Licensing or Assignment
- Licensing the trademark to an Indian affiliate or third party and ensuring actual commercial use may help in preserving the mark.
- However, recordal of the license with the Trademarks Registry is essential under Section 48 for the licensee’s use to count.
Defensive Filing Strategy
- Register the trademark in multiple relevant classes proactively, especially where brand dilution is possible.
- Though defensive registration is not officially provided for, the courts have upheld brand protection across unrelated classes for well-known marks.
Judicial Precedents on Non-Use and Defensive Protection
Hardie Trading Ltd. v. Addisons Paints and Chemicals Ltd. [(2003) 11 SCC 92]
- The Supreme Court emphasized that a genuine intention to use the mark is vital for retaining registration.
N.R. Dongre v. Whirlpool Corporation [(1996) 5 SCC 714]
- The Court gave recognition to trans-border reputation and restrained Indian entities from using a foreign brand not yet launched in India.
Daimler Benz v. Hybo Hindustan [AIR 1994 Del 239]
- Use of the name “Benz” by an undergarment manufacturer was injuncted, despite no use in India by Daimler Benz in that class—an early form of defensive protection.
Ensuring Trademark Security in the Indian Market
India’s trademark law does not provide a separate statutory regime for defensive trademarks today. However, well-known mark protection, strategic filings, genuine intention to use, and limited use activities serve the same purpose for brand owners looking to secure their rights without immediate market activity.
For multinational companies, proactively documenting plans for future use, applying for well-known mark status, and ensuring partial or licensed use are practical strategies to mitigate the risk of non-use cancellation. With growing brand enforcement awareness and evolving jurisprudence, Indian trademark law increasingly accommodates the realities of modern, global commerce while balancing it with the obligation of bona fide use.
