Find out in this blog post:
Planning to do business in India? Whether you are planning to source in India or perhaps sell your products there, remember that the law in India is different to Europe or China when it comes to trademark protection. It operates on a first-to-use basis, which is worth knowing as it can have a big impact on your business.
In the field of trademarks, India has a first-to-use rule, which means that the priority of rights in a trademark belongs to the person (company) who first used it. This rule is an offshoot of the accepted common law doctrine of “passing off”, which supports the protection of businesses, including their trademarks, against unfair exploitation of their reputation by others. In practice, it allows the company that first used a well-known trademark to defend its exclusive right to use it if another company wants to put the same mark on the market or register it with the local patent office.
In other words, if you are using your trademark in India but have not yet formally registered it, you have a chance of upholding the exclusivity of your trademark in the event of litigation. However, to avoid the risk of litigation and spending money unnecessarily, it is better to apply for trademark protection immediately by claiming prior use.What does this mean?
Registering a trademark in any market is important, but in the case of large markets such as India and China, it is of particular importance. India has entered a growth phase, later than China, but with a multi-year perspective also. We can expect the two countries to compete fiercely for sourcing and customers. In turn, exporters to India will face competition from their rivals fighting for the Indian middle class market pockets. Can you succeed without having exclusive rights to your brand? The answer is obvious – without trademark protection, neither importing from India nor exporting to India will be successful in the long term.
It’s often assumed, somewhat automatically, that the issue of protecting a trademark only concerns expanding companies looking to conquer new markets. It is often forgotten that the equivalent commercial transaction is importing from a particular country, because in a formal sense it is the same act of buying and selling goods.
It’s often assumed, somewhat automatically, that the issue of protecting a trademark only concerns expanding companies looking to conquer new markets. It is often forgotten that the equivalent commercial transaction is importing from a particular country, because in a formal sense it is the same act of buying and selling goods.
Suppose you want to outsource manufacturing in India under your brand name. You send out enquiries to several factories. Eventually you agree with one and start business. After some time, you get a notice that someone is accusing you of infringing their trademark, which is actually ‘your’ trademark. In rush you file for trademark protection claiming prior use. And even if you prove (if you prove) that you were the first to use your mark in India by submitting evidence, you will lose time and money. If you can’t prove it, you will be forced to do some extra actions. It is not worth the risk, better to have the trademark registered in advance.
It is possible. However, at least four conditions must be met. The first is that you apply for trademark protection in India without claiming prior use, and if no one has used such a mark before (the second condition), the application is not refused protection on the ground of prior use (the third), and no one objects to your registration (the fourth), you will become the sole owner of the mark. In other words, even if your trademark has not been used in India by you or anyone else before the date of application, you are well on the way to obtaining an exclusive right. But you are not guaranteed.
But if someone else has used the same mark before but has not registered it, you will not get protection. That is why it is a good idea to register a mark exclusively in advance.
The law does not specify exactly how long you have to use the mark, so you can rely on prior use clauses in litigation or when applying for registration. However, given the size of India, the wider the territory and the longer the use of the mark, the easier it will be to prove actual use. Of course, in the reality of online sales, it is easier to show use throughout India. In other words, the use should be significant enough to make the mark recognisable to the relevant class of consumers. And it has to be proven.
In the case of a foreign company, proof of use of the trademark in India is provided by submitting commercial documents. In the case of a buyer, these are purchase contracts, invoices showing the product brand and the relevant customs documents. If you are importing into India, you will also need the same documents, but ideally the documentation should be supplemented with evidence of the existence of the trademark in the specific market (target group).
There is another important aspect of proving prior use of a brand – the date of first use. It is therefore important for the entrepreneur to be aware of this and to carefully secure evidence of this date. This can be very important in the event of a dispute in the future.
