How to Acquire Trademark Rights in India: Use vs Registration

When you launch a brand in India – whether it’s a startup, a regional food product, or a service business – one of the first legal questions you’ll face is: how do you protect your name or logo? The answer in Indian trademark law is not as simple as “just register it.” India’s legal framework under the Trade Marks Act, 1999 recognises two distinct pathways to acquiring trademark rights: through actual use of the mark in the marketplace, and through formal registration with the Trade Marks Registry. Both routes are legally valid and carry real consequences – and understanding the difference between them is essential for anyone serious about brand protection.

What is a trademark and what does “acquiring rights” mean? 🔗

Under Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is defined as a mark that is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others. This includes words, names, logos, numerals, shapes, packaging, or combinations of colours. “Acquiring rights” simply means establishing a legally enforceable claim to that mark – the right to prevent others from using an identical or deceptively similar mark in connection with your goods or services. In India, this right can originate in one of two ways: through factual use in the market, or through statutory registration.

Acquiring rights through use: the “first user” principle 🔗

India follows what is widely called the “first-to-use” rule. This means that the person who first adopts and uses a trademark in commerce in India acquires an inherent, common law right over that mark – even without registering it. The basis of this right is the goodwill and reputation the mark builds among consumers over time.

This principle is rooted in common law and has been recognised consistently by Indian courts. In the landmark case of S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, the Supreme Court of India held that trademark registration merely recognises rights that already exist at common law – it does not create them from scratch. In that case, the respondent’s family had been using the mark “Iruttu Kadai Halwa” since 1900, and the Court protected her rights against a later registered proprietor, ruling that prior use takes precedence over registration.

Similarly, in Amritdhara Pharmacy v. Satyadeo Gupta AIR 1963 SC 449, the Supreme Court ruled that the right to a trademark arises from its use, not merely from registration. These precedents firmly establish that use-based ownership is not a secondary or inferior form of rights – it is foundational.

What counts as “use”? 🔗

Use, for the purposes of trademark rights, must be continuous, consistent, and within the territory of India. Courts have made it clear that foreign use of a mark does not establish rights in India. This was decisively illustrated in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018), where Toyota claimed prior rights over the mark “PRIUS” globally, but the Supreme Court held that since Toyota had not used the mark commercially in India before Prius Auto Industries began doing so in 2006, Toyota could not claim prior use rights in India. The ruling underscored that use within India is what counts.

What protection does an unregistered mark get? 🔗

An unregistered trademark is protected in India through the common law remedy of passing off. Under Section 27(2) of the Trade Marks Act, 1999, the Act expressly preserves the right of a trademark owner – registered or not – to take action against any person who passes off their goods or services as those of another. Passing off protects goodwill: if someone else uses your mark in a way that misleads the public and causes you commercial harm, you can seek relief in court. However, winning a passing off action requires you to prove three things: the existence of your goodwill, a misrepresentation by the other party, and actual or likely damage to your business. This evidentiary burden is considerably heavier than in a statutory infringement action.

Acquiring rights through registration: statutory protection under the Trade Marks Act 🔗

Registration is the second, and often more advantageous, pathway to acquiring trademark rights. Under Section 18 of the Trade Marks Act, 1999, any person claiming to be the proprietor of a trademark – whether already in use or proposed to be used – can apply in writing to the Registrar of Trade Marks for registration. The application must specify the mark, the class of goods or services under the Nice Classification (which covers 45 classes), and details of prior use, if any.

Registration is governed and administered by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) under the Ministry of Commerce and Industry. The Trade Marks Rules, 2017 govern the procedural aspects of filing, prosecution, and registration.

The registration process 🔗

The journey from application to registration broadly follows these stages. First, the applicant files an application along with the prescribed fee, which varies depending on whether the applicant is an individual, a startup, or a larger entity. The Trade Marks Office then examines the application and issues an examination report, which may raise objections. If the application is accepted after addressing any objections, the mark is published in the Trade Marks Journal, giving any third party four months to file an opposition. If no opposition is received – or if the applicant successfully overcomes any opposition – the mark is registered and a certificate is issued. Registration is valid for ten years and can be renewed indefinitely.

Until the mark is registered, the applicant can use the symbol ™ to indicate a claim to the mark. Once registered, the owner is entitled to use the symbol ®.

What rights does registration confer? 🔗

Under Section 28 of the Trade Marks Act, registration grants the owner exclusive rights to use the trademark in relation to the goods or services for which it is registered. It also allows the owner to take statutory action for infringement under Section 29 without having to separately establish goodwill or reputation. Courts presume a registered mark to be valid, significantly easing the enforcement process. In addition, a registered trademark can be assigned, licensed, or used as an asset – giving it commercial utility well beyond the courtroom.

Section 34: when prior use beats registration 🔗

One of the most important provisions in Indian trademark law is Section 34 of the Trade Marks Act, 1999. This section acts as a critical exception to the rights granted by registration under Section 28. It provides that a registered proprietor cannot prevent a prior user – someone who was using an identical or similar mark before the date of the registrant’s first use or application, whichever is earlier – from continuing to use that mark.

To benefit from Section 34, a prior user must demonstrate that their use was continuous, in good faith, and within India, in relation to the same or similar goods and services. The provision essentially codifies the “first user” principle and puts it above the formal rights of a registered owner. As the Delhi High Court observed in Dongguan Huali Industries Co. Ltd. v. Anand Aggarwal, registration does not confer absolute immunity – it is contingent on respecting the rights of prior users who have established goodwill through actual use.

This means that if a business registers a trademark without knowing that someone else was already using a similar mark, that prior user can continue using their mark lawfully, and can also pursue a passing off action against the registered proprietor if there is a likelihood of public confusion. The Supreme Court’s reasoning in S. Syed Mohideen v. P. Sulochana Bai was unequivocal on this: the scheme of the Act recognises the rights of the prior user as superior to those of the registered user.

Use vs registration: comparing the two systems 🔗

India’s trademark system is a hybrid – it draws from both the use-based system (where rights arise from actual commercial use) and the registration-based system (where rights are formalised through an official process). The table below captures the key distinctions between the two.

Under the use system, ownership is determined by who first used the mark in India. Rights are informal but real, protected through passing off under common law. The downside is that enforcing these rights requires proving goodwill, misrepresentation, and damage – a demanding evidentiary exercise. Under the registration system, rights follow the date of application. Protection is statutory, enforcement is simpler, and the mark enjoys a legal presumption of validity. However, registration does not erase prior use rights – a registered owner remains vulnerable to a Section 34 defence by a prior user.

Where two or more applicants file for the same mark based on proposed (future) use – and neither has yet used it – priority goes to the earlier application date. This is one area where the registration-based approach takes firm precedence.

Can trademark rights be acquired in other ways? 🔗

Beyond use and registration, trademark rights in India can also be assigned (transferred) or acquired through inheritance. When a business is sold or restructured, the trademark associated with it can be transferred as part of the goodwill of the business, subject to the provisions of the Trade Marks Act. Rights can also be licensed to third parties through registered user agreements, allowing others to use the mark while the original owner retains ownership. In such cases, the prior use of an assignor can also be factored into the assignee’s claim of prior use, as was recognised in the Nestlé v. Kaira case decided by the Delhi High Court.

Why registration is still the smarter move 🔗

Given that India’s law does protect unregistered marks through passing off, one might wonder whether registration is truly necessary. The answer, in practice, is an emphatic yes. While an unregistered prior user has significant rights, the burden of proving those rights – through sales records, invoices, advertising material, and evidence of consumer recognition – can be expensive, time-consuming, and uncertain. Registration shifts that burden substantially. A registered trademark owner does not need to prove reputation to bring an infringement action; the certificate of registration itself establishes the right.

Registration also opens the door to border protection measures, the ability to record the mark with customs authorities, and stronger cross-border rights in the context of international agreements like the Madrid Protocol, to which India is a member. For any business with plans to grow – regionally, nationally, or internationally – registration is a foundational legal step, not a mere formality.

What do you think? If a small business has been using its brand name consistently for five years without registering it, and a new entrant registers a similar name tomorrow – who has the stronger legal position in India, and what evidence would tip the balance? And should India move further toward a pure registration-based system, or does the protection of prior users through common law remain an important safeguard for businesses that grow organically without formal legal advice?

References

1. https://www.indiacode.nic.in/handle/123456789/1993
2. https://www.ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html
3. https://indiankanoon.org/doc/149416858/
4. https://www.lakshmisri.com/insights/articles/prior-use-v-registered-trademark/
5. https://www.scconline.com/blog/post/2022/12/05/the-rights-of-prior-users-of-trade-mark-under-the-trade-marks-act-1999/
6. https://www.wipo.int/classifications/nice/
7. https://ipindia.gov.in/trade-marks.htm
8. https://www.mondaq.com/india/intellectual-property/788896/trademarks-comparative-guide
9. https://www.lexology.com/library/detail.aspx?g=51d2a8a0-fcd5-4323-a134-28896c1370da
10. https://www.barandbench.com/columns/registered-mark-v-unregistered-mark-who-wins
11. https://blog.ipleaders.in/what-is-the-position-of-an-unregistered-trade-mark-under-the-trade-marks-act1999/