Every now and then comes a call, where a client alleges someone filing a trademark application for a brand name they claim is their right. And their frustration when realising this is genuine.
The investment in building a serious brand is very resource intensive. Trademarks are developed and marketed at scale. It is seen on packaging, social channels, on websites and investor decks.
And say you decide to file after use, you realise someone already has applied for the trademark. Their message is always some version of the same three words: I was first.
Believe it or not, they actually were. But, in India, filing first matters more than most people think and less than you’d hope.
The Part everyone gets backwards
It’s often heard that whoever runs to the registry first, owns the trademark. It’s wrong, and believing this has got founders confused about their IP strategy.
India is a first-to-use system. Rights in a trademark flow from genuine use in trade, and not merely from a filing receipt. As per Section 34 of the Trade Marks Act, a registered proprietor cannot stop an earlier, continuous user of the same or a similar mark. This has been affirmed in various judgments for decades now. N.R. Dongre v Whirlpool ((1996) 5 SCC 714) is the case every practitioner reaches for.
So the squatter who filed for the trademark has not automatically won. That’s a relief! But not the end.
The Catch
Being right and being protected are two different things.
To beat a squatter on prior use, you have to prove prior use. One that’s continuous, documented, dated. Invoices. Advertisements. Packaging with dates on it. All contribute to a clean paper trail. If your use has been casual, intermittent, or undocumented, the conflict gets long, expensive and reduced chances of a successful outcome.
That’s exactly what the squatter refers to as his business model. These squatters aren’t betting they’ll win but rather working towards making you pay them than spend months and several lakh rupees proving what you already know.
I am a genuine user. What could I do if I find myself in such a situation?
If you discover someone has filed or registered your trademark, move in this order:
Freeze your evidence. Organise and take control of everything that shows when your use began, starting with your firsts of invoices, ads, packaging, press mention, etc. The seriously you take this exercise, the better your chances to succeed.
File your own application NOW. If you haven’t already. You can claim your actual date of first use, across all classes relevant to your trade. A pending application is priority and priority is leverage.
Oppose - don’t sulk. Finding opponents reach the race track before can be saddening, but should deviate you from your discipline driven IP strategy. Once their mark is advertised in the Trade Marks Journal, you have a four-month window to file a formal opposition. Miss it and your options narrow sharply.
If it’s already registered, seek rectification. This is a cancellation action before the Trade Marks Registry on grounds that can include their bad faith and your prior use.
Send a cease-and-desist, and weigh a passing-off action. Indian courts grant interim injunctions in strong prior-use cases, sometimes within weeks. The credible threat of one changes the whole negotiation.
Loop in counsel before you decide to reply to the squatter. One careless email admitting anything adverse can hand them the case on a platter.
Use is critical, but why filing first before use still matters the most?
Registration before launching at scale is beneficial, and the process would only cost a fraction of a dispute. Filing early turns your rights from something you have to litigate into something your simply hold.
Prior use will save you for sure. It just won’t save you cheaply.