Use In Commerce Under Indian Trademark Law: A Comparative Commentary Inspired By U.S. Jurisprudence

Introduction

The concept of "use" under trademark law is central to establishing rights, enforcing protection, and defending ownership. A recent decision by the U.S. Court of Appeals for the Federal Circuit denied trademark protection for the color dark green used on medical examination gloves, holding that the applicant failed to prove acquired distinctiveness. This ruling reinforced the high bar for establishing color as a source identifier in U.S. trademark law.

This development has sparked renewed attention to how different jurisdictions approach non-traditional trademarks, particularly color marks. Inspired by this, the present article takes a deeper look at the Indian legal approach to trademark "use," including how courts interpret use in relation to non-conventional marks like color. Although Indian law permits registration of color marks in theory, the evidentiary threshold for proving distinctiveness and use in practice remains equally high.

This article explores the Indian perspective on "use" in trademark law, situating the analysis within the framework of the Trade Marks Act, 1999. It aims to address the doctrinal, procedural, and commercial implications of use-based rights, with a view to aligning Indian legal understanding with global developments.

After reading this thought-provoking analysis by my U.S.-based colleague, I was inspired to examine this issue from an Indian legal standpoint. This article explores the Indian perspective on "use" in trademark law, situating the analysis within the framework of the Trade Marks Act, 1999. It aims to address the doctrinal, procedural, and commercial implications of use-based rights, with a view to aligning Indian legal understanding with global developments.

This article is structured as a doctrinal analysis and comparative commentary, referencing Indian statutes, case law, and scholarly material. The goal is to provide clarity for practitioners, scholars, and businesses seeking to protect and enforce trademarks in India and abroad.

1. Statutory Basis of Use in Indian Trademark Law

Under the Trade Marks Act, 1999, Indian law does not mandate actual prior use for the filing of a trademark application. Sections 18 and 47 form the backbone of the legal position on "use" and "non-use."

• Section 18 allows for filing based on both prior use and proposed use. Applicants must indicate whether the mark has been used in relation to the goods or services or if it is proposed to be used.
• Section 47 allows for removal of a registered trademark from the register if it has not been used for a continuous period of five years and three months post-registration.

Thus, while use is not a condition precedent to registration, it becomes critical in sustaining rights post-registration and defending them in infringement or opposition proceedings.

2. Meaning and Scope of "Use" under Indian Law

The meaning of "use" in Indian trademark law has evolved through a series of judicial interpretations, moving beyond a narrow focus on commercial sales to encompass broader market activity that signifies genuine commercial intent. While the Trade Marks Act, 1999 does not define "use" exhaustively, courts have developed a purposive understanding that balances legal formalism with commercial reality.

A foundational authority on this subject remains the Supreme Court's decision in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. [(2003) 11 SCC 92], where the Court held that even use by a licensee or an authorised distributor can satisfy the requirement of "use" under Indian law. The Court emphasized that trademark law is intended to protect commercial goodwill and therefore must accommodate the commercial realities of agency, distribution, and outsourcing models.

Building on this, recent jurisprudence has further clarified what constitutes sufficient "use" for maintaining trademark rights:

• In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors. [(2006) 8 SCC 726], the Supreme Court held that mere registration of a trademark does not confer a monopoly unless accompanied by bona fide use. The Court distinguished between "token use" and use that reflects real market presence or intent.
• In Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors. [(2016) 2 SCC 672], the Court noted that the requirement of use does not mean only actual sales. Advertising and promotional activity that clearly signals intention to use the mark in the course of trade may, in some cases, suffice—especially when such use reaches the relevant consumer segment.
• More recently, the Delhi High Court in Tata Sia Airlines Ltd. v. Union of India & Ors. [2023 SCC OnLine Del 4246] clarified that "use" in India must be commercially significant and public-facing. The Court rejected claims of use where the mark was confined to internal planning documents without external market engagement.

These judgments illustrate that the Indian judiciary recognizes both actual and demonstrative use, so long as it reflects a bona fide intention to trade. Key components of this doctrine include:

• Use must be in the course of trade: Internal planning, R&D, or limited prototyping does not qualify. There must be outward-facing commercial activity linked to the mark.
• Advertisement or promotional use can qualify, provided it is not deceptive or tokenistic. Courts assess whether such use would reasonably be perceived by consumers or the market.
• Use must be in India: Cross-border reputation may bolster passing off claims, but for statutory protection under the Trade Marks Act, the use must occur within Indian territory.

This evolving interpretation aligns Indian trademark law with global trends, including the U.S. position discussed earlier, where mere intent or symbolic acts are insufficient for asserting trademark rights.

For Indian businesses, especially those navigating international markets, it is crucial to document and demonstrate such use through invoices, promotional materials, third-party contracts, and digital footprints. Such documentation not only supports enforcement actions but also insulates the mark from non-use cancellation under Section 47 of the Act.

3. Evidence of Use: Procedural Norms

Rule 25 of the Trade Marks Rules, 2017 allows the Registrar to require an affidavit of use. This affidavit must contain:

• Date of first use
• Nature of goods/services
• Manner and extent of use
• Supporting documents, such as invoices, promotional material, etc.

Such evidence is vital in:

• Opposing or defending registration
• Resisting rectification
• Proving distinctiveness

4. Proposed Use and Its Implications

The concept of "proposed to be used" allows new businesses or new product lines to seek protection before market entry. However, misuse of this provision (i.e., speculative filing or warehousing) may face scrutiny during opposition or rectification proceedings.

Courts have emphasized the need for a bona fide intention to use, even when registering a mark without existing commercial operations.

5. Treatment of Non-Traditional Marks: The Case of Color Trademarks

Indian trademark law allows for the registration of non-conventional marks including color, shape, sound, and smell under the inclusive definition of a "mark" in Section 2(1)(m) and "trademark" under Section 2(1)(zb) of the Trade Marks Act, 1999. However, registration of such marks, particularly color marks, is subject to stringent scrutiny.

Unlike conventional word or logo marks, the applicant must demonstrate that the color or combination of colors has acquired distinctiveness that is, it must indicate the source of goods or services to the average consumer. The Indian courts and the Trademark Registry apply a high evidentiary standard akin to that observed in U.S. law.

A leading Indian case is Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. [2003 (27) PTC 478 (Del)], where the Delhi High Court refused to grant exclusive rights over the red and white color combination used on toothpaste packaging, stating that colors per se are not inherently distinctive and must be shown to have acquired distinctiveness through use.

The Trade Marks Manual (2018) issued by the Indian Trademark Office also clarifies that single colors are generally not registrable unless exceptional evidence is produced demonstrating long, exclusive use and public association with the goods/services.

Thus, while Indian law permits protection of color marks, they face a legal threshold comparable to that discussed in the recent U.S. Federal Circuit decision involving green medical gloves. Both systems require:

• Extensive evidence of acquired distinctiveness
• Proof of exclusive and consistent use
• Market recognition or consumer association with the source

These principles align Indian trademark jurisprudence with international norms, emphasizing that protection of non-traditional marks is an exception rather than the rule.

6. Consequences of Non-Use

As per Section 47, a registered trademark may be canceled if:

• It was registered without any bona fide intention to use; or
• It has not been used for a continuous period of five years and three months.

This provision is a safeguard against "trademark hoarding" and ensures that the register reflects marks actually used in commerce.

6. Comparative Note: India vs. U.S.

7. Practical Guidance for Indian Trademark Owners

• If planning to expand to the U.S., ensure actual commercial use is established before or shortly after applying.
• Maintain evidence of use in India such as packaging, labels, and invoices.
• Avoid speculative or defensive filings without a clear plan of use.
• If using through affiliates or licensees, ensure proper documentation.

Conclusion

While India offers a more flexible framework for registering trademarks on an intent-to-use basis, the importance of genuine and timely use cannot be overstated. The U.S. decision discussed above reinforces the global trend toward rigorous enforcement of the "use" requirement. Indian businesses seeking global brand protection must align their strategies with jurisdiction-specific standards.

This article has sought to outline the contours of "use" under Indian law and draw meaningful contrasts with U.S. trademark jurisprudence. A nuanced understanding of these legal standards is critical for brand owners operating in an increasingly interconnected global marketplace.

References

1. Dentons, Federal Circuit Ruling Clarifies - Federal Circuit Ruling Reinforces Strict Standards for Color Trademarks (May 30, 2025), https://www.dentons.com/en/insights/alerts/2025/may/30/federal-circuit-ruling.
2. Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 S.C.C. 92 (India).
3. The Trade Marks Act, No. 47 of 1999, INDIA CODE (1999).
4. The Trade Marks Rules, 2017, Gazette of India, Part II, Sec. 3(i).
5. Ministry of Commerce and Industry, Manual of Trade Marks Practice and Procedure, Version 1.1 (2018).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.