Introduction
Trademark law seeks to maintain a delicate balance between protecting brand identity and preserving fair competition. While businesses are entitled to safeguard their trademarks, enforcement must remain within the boundaries established by the Trade Marks Act, 1999.
A growing concern in trademark practice is the issuance of cease-and-desist notices against businesses whose marks have merely been filed on a “proposed to be used” basis. In such cases, the applicant may not have commenced commercial use of the mark, acquired goodwill, or even obtained registration.
This raises an important legal question: Can a trademark owner legitimately assert infringement against a mark that has neither been registered nor commercially used?
The distinction between an application for registration and an enforceable trademark right is fundamental. A trademark application represents a request for statutory protection; it does not, by itself, create the same rights as registration or established commercial use.
This article examines the legal position surrounding “proposed to be used” trademarks, the distinction between registration and common-law rights, the role of the Trade Marks Registry, and the risks associated with premature trademark enforcement.
Understanding “Proposed to Be Used” Trademarks
Section 18 of the Trade Marks Act, 1999 permits an applicant to seek registration of a trademark either on the basis of prior use or on the basis of a bona fide intention to use the mark.
An application filed as “proposed to be used” therefore expressly acknowledges that the mark has not yet been commercially used.
At this stage, the applicant generally does not possess:
- Established commercial goodwill in the mark;
- A demonstrated reputation among consumers;
- Evidence of actual market use; or
- Statutory exclusive rights arising from registration.
However, this does not mean that filing such an application is legally meaningless. The Act expressly recognises bona fide intention to use as a legitimate basis for seeking registration.
The important distinction is between the right to apply for registration and the right to enforce a registered trademark.
An application is a claim seeking statutory protection; it is not equivalent to a completed registration.
Registration, Prior Use and Enforceable Rights
Trademark protection in India operates through both statutory and common-law principles.
Statutory Protection Through Registration
Section 28 of the Trade Marks Act provides the registered proprietor with exclusive rights to use the registered trademark in relation to the goods or services for which it is registered, subject to the provisions of the Act.
Consequently, merely filing an application does not automatically confer the statutory exclusivity associated with registration.
Common-Law Protection Through Passing Off
Trademark law also protects prior commercial goodwill through the common-law remedy of passing off.
A passing-off action generally requires the claimant to establish elements such as:
- Goodwill or reputation attached to the mark;
- Misrepresentation by the defendant; and
- Damage or likelihood of damage to that goodwill.
These requirements make actual commercial presence particularly important.
Where a mark has never been used in the marketplace, establishing goodwill and reputation becomes substantially more difficult. Therefore, an unused “proposed to be used” mark ordinarily cannot be treated as though it already possesses the same market-based rights as a mark with established commercial use.
The Problem of Premature Enforcement
Despite these distinctions, trademark disputes sometimes arise even before an applicant’s mark has entered the marketplace.
A trademark proprietor may issue a legal notice alleging:
- Trademark infringement;
- Deceptive similarity;
- Passing off;
- Dilution; or
- Potential consumer confusion.
Such allegations can be particularly significant where the recipient is a startup, small business or first-time entrepreneur.
A legal notice from an established brand can create substantial commercial pressure, even where the recipient has not commenced use of the disputed mark.
The concern is not that trademark owners should refrain from protecting legitimate rights. Rather, the concern is that enforcement should correspond to the legal rights actually possessed at the relevant stage.
Treating a pending application as though it were an enforceable registered trademark risks blurring the distinction between an application and an acquired right.
The Role of the Trade Marks Registry
One of the most important safeguards built into the Indian trademark system is the examination and opposition mechanism administered by the Trade Marks Registry.
When an application is filed, the Registry examines the mark in accordance with the statutory framework. Issues such as similarity with existing marks, distinctiveness and registrability may arise during this process.
The Registry may consider factors including:
- Visual similarity;
- Phonetic similarity;
- Conceptual similarity;
- The nature of the goods or services;
- The relevant classes;
- The likelihood of confusion; and
- Other statutory grounds affecting registrability.
Following advertisement of a mark in the Trade Marks Journal, interested parties may also avail themselves of the statutory opposition mechanism.
This process is significant because it provides an institutional framework within which competing trademark claims can be examined.
A private party may certainly communicate its objections to another applicant. However, a private assertion that two marks are similar does not itself determine the legal registrability of the applicant’s mark.
Opposition Proceedings and Procedural Discipline
The Trade Marks Act provides specific mechanisms through which third parties can challenge trademark applications.
Instead of relying solely upon private threats, a proprietor who genuinely believes that a pending application conflicts with its existing rights can consider the statutory remedies available under the Act, including opposition proceedings where applicable.
This procedural structure serves an important purpose.
It allows:
- The applicant to respond to the objections;
- The opposing party to substantiate its rights;
- Evidence to be placed on record;
- The Registry to assess the competing claims; and
- The dispute to be determined through an established legal process.
Procedural discipline is particularly important in intellectual property disputes because trademark rights can significantly affect market access and commercial identity.
When Judicial Intervention May Be Appropriate
The fact that a mark is pending or filed on a “proposed to be used” basis does not mean that courts can never intervene.
Exceptional circumstances may justify judicial intervention, particularly where the facts demonstrate bad faith, dishonest adoption, deliberate misappropriation, or other actionable conduct.
The relevant question is therefore not simply whether a trademark application is pending, but whether the claimant can establish a legally recognised cause of action supported by appropriate evidence.
Courts assess trademark disputes contextually, taking into account factors such as the nature of the marks, goods or services, surrounding circumstances, consumer perception, prior rights and the conduct of the parties.
Accordingly, premature enforcement should not be confused with legitimate protection of established trademark rights.
Can Common or Descriptive Words Be Monopolised?
Another issue frequently encountered in trademark disputes is the attempted monopolisation of ordinary, descriptive or commonly used expressions.
Trademark protection is intended to distinguish the goods or services of one undertaking from those of others. It is not ordinarily intended to remove commonly understood language from the public domain.
Where a mark consists of a common, descriptive or dictionary expression, the extent of protection may depend significantly upon factors such as:
- The inherent distinctiveness of the mark;
- The extent of actual use;
- Duration of use;
- Advertising and promotion;
- Consumer recognition; and
- Evidence of acquired distinctiveness or secondary meaning.
This becomes particularly important when enforcement is attempted before the mark has acquired any meaningful market presence.
A party seeking broad exclusivity over a commonly used expression may therefore face a greater evidentiary burden than a proprietor relying upon a highly distinctive and extensively used mark.
The Chilling Effect on Businesses
Premature trademark enforcement can have consequences beyond the immediate dispute.
For emerging businesses, receiving a legal notice from an established trademark proprietor may result in:
- Abandonment of a potentially viable brand;
- Unnecessary legal expenditure;
- Delayed market entry;
- Rebranding costs; or
- Settlement despite the absence of a clear legal obligation.
This creates a broader policy concern.
Trademark law should protect legitimate brand investment, but it should not become a mechanism through which businesses are discouraged from entering markets merely because they receive an intimidating legal threat.
The objective should be to maintain a system where legitimate trademark rights are strongly protected while unsupported claims are subjected to appropriate legal scrutiny.
Responsible Trademark Enforcement
Effective trademark enforcement requires more than simply identifying a potentially similar mark. The proprietor should first assess the legal foundation of the rights being asserted.
A responsible enforcement strategy should consider:
- Whether the mark is registered;
- Whether there has been genuine prior use;
- Whether goodwill and reputation can be demonstrated;
- Whether the competing mark is actually being used;
- Whether the goods or services are commercially related;
- Whether there is a genuine likelihood of confusion;
- Whether statutory opposition proceedings are available; and
- Whether there is sufficient evidence to support the allegations being made.
Where the competing mark is merely an application on a “proposed to be used” basis, the distinction between preventive objection and premature infringement enforcement should be carefully maintained.
Conclusion
The issue of premature trademark enforcement highlights an important principle of Indian trademark law: the existence of a trademark application is not necessarily the same as the existence of an enforceable trademark right.
A “proposed to be used” application is recognised by the Trade Marks Act as a legitimate route to seek registration. However, until registration is granted or sufficient common-law rights have otherwise been established through actual use, the nature and scope of enforceable rights must be assessed carefully.
Trademark proprietors have every right to protect genuine intellectual property interests. At the same time, enforcement should be proportionate, evidence-based and consistent with the statutory framework.
The Trade Marks Registry and the opposition process play an important role in determining registrability and resolving conflicts between competing applications. Courts, where approached, must similarly examine whether a legally sustainable cause of action exists rather than treating every pending application as an infringement in itself.
Ultimately, a robust trademark regime requires both protection and restraint. The law should prevent genuine infringement while ensuring that legitimate competition and new market entrants are not unnecessarily restricted by premature or unsupported enforcement claims.