Premature Trademark Enforcement: Legal Notices, ‘Proposed to Be Used’ Marks, and the Role of the Trade Marks Registry in India
Introduction
In recent years, trademark enforcement in India has witnessed a noticeable shift—not merely towards protection of intellectual property, but at times towards over-protection. One increasingly common practice is the issuance of cease-and-desist or legal notices against applicants who have merely filed trademark applications under the category “proposed to be used”, without any actual commercial use of the mark.
This raises critical questions:
Can trademark rights be enforced before use?
Is a legal notice justified when a mark is still under examination?
And most importantly, who is the rightful authority to determine similarity and infringement at this stage—the courts, private parties, or the Trade Marks Registry?
This article examines the concept of premature trademark enforcement, analyses the legal status of “proposed to be used” marks under Indian law, and underscores the central role of the Trade Marks Registry in adjudicating such disputes.
‘Proposed to Be Used’ Marks Under the Trade Marks Act, 1999
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 a bona fide intention to use the mark in the future. An application filed as “proposed to be used” clearly indicates that:
- The mark is not yet in commercial use
- No goodwill or reputation has been generated
- No market presence exists as on the date of application
Indian trademark law, therefore, recognises intention to use as a valid basis for seeking registration, but it does not equate such intention with enforceable proprietary rights.
The distinction between application and acquired rights is fundamental and often overlooked in pre-litigation enforcement strategies.
Trademark Rights: Registration vs Use
Trademark rights in India stem from two sources:
- Statutory rights through registration
- Common law rights through use (passing off)
While registration confers exclusive rights under Section 28 of the Act, such rights crystallise only after registration, not merely upon filing of an application. Similarly, passing-off actions require proof of goodwill, misrepresentation, and damage—elements that are inherently absent when a mark has not been used at all.
Therefore, where a mark is merely “proposed to be used,” the legal foundation for alleging infringement or passing off remains extremely weak.
The Problem of Premature Legal Notices
Despite this settled legal position, it has become increasingly common for registered proprietors to issue legal notices against applicants at the application or examination stage itself. Such notices often allege infringement, misrepresentation, or deceptive similarity without waiting for:
- Examination by the Trade Marks Registry
- Advertisement of the mark
- Statutory opposition proceedings
This practice gives rise to multiple concerns:
- Chilling effect on startups and small businesses
- Use of legal notices as tools of intimidation rather than protection
- Bypassing the statutory mechanism provided under the Act
- Forcing applicants into unnecessary litigation or withdrawal
Premature enforcement thus risks converting trademark law from a shield into a sword.
Who Decides Trademark Similarity?
A central question in such disputes is: who decides whether two trademarks are similar or deceptively similar?
The Trade Marks Act provides a detailed statutory framework entrusting this function primarily to the Trade Marks Registry, which examines:
- Phonetic, visual, and conceptual similarity
- Nature of goods or services
- Likelihood of confusion
- Public interest and distinctiveness
The Act also provides a robust opposition mechanism, allowing any aggrieved person to challenge an application after advertisement.
By issuing legal notices at the pre-registration stage, parties often attempt to pre-empt this statutory adjudication, effectively substituting private assertions for institutional scrutiny.
Judicial Approach to Premature Enforcement
Indian courts have repeatedly emphasised that trademark disputes must be examined contextually, considering use, goodwill, and likelihood of confusion. Courts have also cautioned against monopolising common or descriptive words, particularly those derived from Indian languages, unless secondary meaning is clearly established.
While courts do intervene in exceptional cases—such as dishonest adoption or clear bad faith—routine interference at the application stage is discouraged. Judicial restraint reinforces the principle that the Registry is the first forum of determination, not the last.
Common Words and the Public Domain
Another recurring feature in premature enforcement disputes is the attempt to claim exclusivity over commonly used or descriptive words, including vernacular expressions.
Trademark law seeks a balance between:
- Protecting distinctive marks, and
- Preserving the public domain for fair competition
Granting excessive protection to generic or commonly understood terms undermines this balance and restricts legitimate entrepreneurial activity.
Need for Responsible Enforcement
Trademark protection is undeniably essential, but enforcement must be proportionate, principled, and procedurally sound. Premature legal notices—particularly against “proposed to be used” marks—risk undermining the statutory scheme of the Trade Marks Act.
A responsible enforcement approach would involve:
- Allowing the Registry to conduct examination
- Availing statutory opposition remedies
- Resorting to courts only where actual infringement or passing off is demonstrable
Such an approach preserves both trademark rights and commercial freedom.
Conclusion
Premature trademark enforcement reflects a growing tension between intellectual property protection and market access. While the law empowers proprietors to safeguard their marks, it does not endorse intimidation or bypassing of statutory processes.
Marks filed as “proposed to be used” occupy a pre-rights stage, where enforcement claims must be approached with caution. The Trade Marks Registry remains the primary authority to assess similarity and registrability, and its role must not be diluted by premature private enforcement.
Ultimately, a mature trademark regime is one that protects innovation without stifling it—and restraint at the enforcement stage is as important as vigilance.