Usage Of Trademark In India– Literal or More To iT?
In my previous article about trademarks, one of the important pointers I had mentioned was about “use” of the mark. Considering that usage of trademark plays a pivotal role in trademark disputes, almost a decider in cases, it is important to explore it. So what is usage in India? How have the Indian courts and tribunals interpreted usage? Do the marks certainly have to be used in India to prove usage? Let’s explore!
The general notion with regard to usage is that there should certainly be ‘actual usage’ of the mark in India,i.e physical presence of mark in goods. But there have been several cases where this has been dispensed with and it also brings us to the concept of trans-border reputation. So let us explore both the above concepts in this blog.
The concept of non-physical usage of the mark figured in a decision of the Hon’ble Supreme Court in the case of Hardie Trading Ltd. v Addison Paint and Chemicals Ltd. Here the Hon’ble Supreme Court giving a wider interpretation to the term usage held that usage could be ‘other than physical’ and that there was no reason to limit the user to use on the goods or to sale of goods bearing the trademark. In the same judgement, the Hon’ble Apex court citing an English case, Bon Matin Trade Mark, was of the view that use of the mark in promotional literature and price lists also constituted usage and physical presence of the mark on goods was not mandatory.
A similar view was also held in Easy Group Ip Licensing Limited vs Easyjet Aviation Services Pvt. The usage of the Plaintiff’s mark was predominantly confined to website traffic and promotion/advertisements and not physical presence of the mark in goods. The Plaintiff offered air travel services, predominantly outside India but the fact that the Plaintiff’s website was freely accessible to Indians who wished to book tickets and that several Indian portals provided links to the Plaintiff’s website were seriously considered by the Hon’ble Delhi High Court. The fact that many Indian newspapers featured articles on the Plaintiff also strengthened the Plaintiff’s claim of usage. Consequently it was ruled in favour of the Plaintiff.
While trying to explore the usage of trademark in India, one can certainly not ignore the concept of trans-border reputation which became widely accepted in India after the Hon’ble Supreme Court’s decision in NR Dongre v Whirlpool Corporation, where the Apex Court ruled that the mark “WHIRLPOOL” had acquired enormous trans-border reputation and goodwill due to wide promotion and advertisements and thus was associated with the Whirlpool company only, despite the fact of no notable actual sale in India. This case set in motion the concept of trans-border reputation with no actual usage of the mark in India. This was followed by Kamal Trading Co., Bombay v. Gillette U.K. Limited, Middle Sex, England, where the Hon’ble Bombay High Court observed “…the goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other Medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation.”
The above cases are good examples of the fact that the Indian courts do not hold a narrow view of the term ‘usage of a mark;’ on the contrary, have gone to great lengths to broaden its scope in order to protect the legitimate interests of the genuine trademark owners. But of course this does not imply a blanket order marking physical usage inessential. As we all know, it also depends on the other facts playing in each case!