2026 | Vol 2(4) | April

Introduction

A trade mark is much more than a logo or a name. It embodies the reputation, trust, and identity that a business builds over time. It helps consumers link a product or service with its source and assures them of a certain level of quality. Because of this, trade mark law grants owners exclusive rights over their marks. However, these rights come with a responsibility: the mark must be used in trade. When a trade mark is registered but not used for a long time, it raises questions about whether that protection is justified.

Trade marks grant exclusive rights to their owners. Therefore, when others use trade marks without authorisation in association with similar goods or services, it constitutes an actionable offense, as it infringes upon the rights of the owner.

In cases of trade mark infringement, the holder of a registered trade mark may pursue legal action, whereas for an unregistered trade mark, the sole recourse is through passing off.

The idea of non-use of trade marks is central to this debate. If trade marks are meant to identify active goods and services, can an unused mark continue to have legal protection indefinitely?

On one side, strict rules against non-use prevent companies from blocking potential marks or hoarding them without real business activity. On the other side, genuine circumstances—such as economic downturns, regulatory delays, or unforeseen events—may prevent a business from using its mark despite a true intention to do so.

This paper takes a closer look at how the law deals with non-use of trade marks and the reasoning behind it. It aims to understand whether current rules truly strike a fair balance—protecting active businesses while ensuring that the trade mark system remains open, fair, and beneficial to the larger market.

Functions of Trade mark

The functions of a trademark extend beyond mere identification and together play a vital role in regulating market behaviour and consumer decision-making. At its core, a trademark performs the origin-indicating function, enabling consumers to identify the source of goods or services and to distinguish them from competing products available in the market. This function reduces consumer confusion and ensures that goodwill generated by a business is linked to the rightful owner of the mark. Closely connected to this is the quality or guarantee function, whereby consumers come to associate a trademark with a particular standard of quality based on past experience. Although trademark law does not directly guarantee quality, this function operates in practice by building consumer trust and confidence, with any misleading representations regarding quality being addressed under consumer protection or unfair competition laws rather than trademark law itself.

In addition, trademarks serve an important advertising or communication function by acting as a powerful marketing tool that conveys information, values, and brand identity to consumers. Through continuous use in advertising, packaging, and promotion, a trademark communicates the reputation of the brand, enhances visibility, and strengthens consumer loyalty. Finally, trademarks fulfil a significant economic or commercial function, as they embody valuable intangible assets derived from reputation and goodwill. This economic value allows trademark owners to commercially exploit their marks through licensing, franchising, assignments, and other business arrangements. Thus, trademarks operate not only as legal identifiers but also as strategic commercial instruments that support fair competition, consumer choice, and economic growth.[1]

What is “Use” under Trade mark law?

The idea of "use" is fundamental to trade mark law.Chapter VI of the TM Act of 1999. If a mark hasn't been used, Section 47 permits it to be taken off the register. In India, a trade mark may be removed from the register if it can be demonstrated that the owner did not intend to use it at the time of registration or if the mark has not been used for three months prior to the removal request. Additionally, a mark may be canceled if it hasn't been used for five years in a row, beginning three months prior to the application.

Indian courts, as seen in JN Nicholas Ltd v Rose and Thistle and another AIR 1994 CAL 43,[2] have interpreted "use" broadly. This includes not only selling goods but also engaging in advertising or promotional efforts, even if the goods aren't available yet.

Similarly, Section 1127 of the U.S. Lanham Act,1946 defines "use" as the real and honest use of a mark in regular trade, rather than just token use meant to satisfy legal standards. Continuous non-use for a set period can serve as evidence of abandonment. A mark may be considered abandoned if its use stops without intent to resume or if the owner’s actions cause it to become generic or lose its uniqueness. Ultimately, the exclusive right to a trademark comes from its steady and genuine use in commerce. Not maintaining this use can result in losing those rights.[3]

Use of Trade mark

The use of a trade mark goes beyond simple identification. It performs several important legal, commercial, and communication roles that shape modern trade and consumer behaviour. Primarily, a trade mark indicates the origin of goods or services, distinguishing one trader's offerings from another's. This basic function is recognized in Section 2(1)(zb) of the TM Act, 1999, and Section 45 of the Lanham Act,1946 (15 U.S.C. §1127).[4] Both emphasize genuine use in commerce as the foundation for protection.

Secondly, trade marks assure consumers of consistent quality and reliability, serving a quality or guarantee function. Over time, consumers associate certain marks with specific standards, which

builds trust and loyalty. This function boosts the brand's reputation and improves its market value.[5]

Trade marks also symbolize advertising and communication. They represent the source of goods and reflect the values and identity of the brand. Modern trade marks, like the ‘Apple’ logo or the ‘Nike’ “Swoosh,” act as powerful marketing tools that convey emotion and lifestyle, reaching beyond their actual products.[6]

Economically, a trade mark represents the goodwill and reputation gained through use. It is an intangible asset that can be licensed, franchised, or sold, highlighting its importance as a tool for investment and commercial growth. Section 37 of the TM Act, 1999, reinforces this by recognising the owner's rights in assignment and transmission.

Finally, trade marks protect owners from unauthorised or misleading use, as stated in Sections 29 and 30 of the TM Act, 1999. This protection supports both business interests and consumer trust, ensuring fairness in trade.

In essence, trade marks act as badges of origin, guarantees of quality, advertising tools, assets of goodwill, and legal protections. Each plays an essential role in commerce and consumer protection.

Non-Use of Trade mark under Special Circumstances

Indian courts have consistently ruled that not using a trade mark because of factors beyond the owner's control does not mean it has been abandoned. In MJ Pvt Ltd( Bombay) v Sunkist Growers Inc ( Los Angeles, USA),1991 PTC 81 (Reg) (Cal),[7] the courts excused non-use due to import restrictions and tariff duties under Sections 46(1) and 46(3). Similarly, in Whirlpool Co v NR Dongre,1996 PTC 415 (Del)[8] the courts recognized import policies as "special circumstances" that justified non-use. However, in Toshiba Appliances v Kabushiki Kaisha Toshiba,1992 PTTC 231 (Reg) (Cal)[9] the Court made it clear that this protection lasts only five years and one month.

In Hardie Trading Ltd. v Addisons Paint & Chemicals Ltd , AIR 2003 SUPREME COURT 3377[10] the Supreme Court stressed that trade mark use must be genuine and sincere, not just a formality. In the same way, Imperial Tobacco Co v The Registrar of Trade Marks AIR 1968 CAL582,[11] stated that "special circumstances" must impact trade generally, not just one trader.

Effects of non-use of Trade mark

The failure to use a trade mark has serious legal and business consequences. Ongoing, genuine use is the basis of trade mark rights. Trade mark law states that rights in a mark are not just obtained through registration; they are maintained through actual use in trade. If a trade mark owner does not use a registered mark for a specified time, they may lose their rights and face cancellation.

Legally, Section 47 of the TM Act, 1999[12] allows any affected person to ask for the removal of a registered trade mark if it has not been used for a continuous period of five years from its registration date and up to three months before the application is filed.

Similarly, Section 45 of the Lanham Act,1946 (15 U.S.C. §1127) defines non-use and an intention not to resume use as abandonment of a trade mark. These rules aim to prevent the control of marks that are not actively used in trade or recognised by consumers.

From a business standpoint, non-use leads to a loss of goodwill and consumer connection that a mark once had. Without active use, the public forgets that the mark indicates origin, which reduces its distinctiveness. Over time, the brand’s market presence weakens. Competitors may use similar marks without creating confusion, which further reduces the original mark’s identity.

Moreover, non-use negatively impacts the enforcement of trade mark rights. Courts often need proof of ongoing use to show reputation and goodwill, especially in cases of infringement or passing off. A trade mark owner who cannot demonstrate genuine use may struggle to claim exclusive rights or damages, which harms the fundamental goal of trade mark protection.

From a policy viewpoint, non-use disrupts the balance between private and public interests. Trade mark law seeks to ensure that registered marks support commercial activities instead of acting as obstacles to competition. Thus, the "use it or lose it" principle reflects the law’s goal to foster a lively and fair market.[13]

Landmark judgement

Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (AIR 1990 Delhi 19)[14]

In this case, the plaintiff, who owns the famous mark “Nataraj,” sought an injunction against the defendant for using a confusingly similar mark on pencils and stationery items. The Delhi High Court ruled that even slight differences do not protect a defendant if they copy the main features of the mark. The Court stressed the importance of protecting well-known trade marks from both infringement and dilution, regardless of the defendant's claim of honest use.

The key principle involved was that well-known marks receive greater protection; deceptive similarity and dilution can be addressed even without identical goods or intent to deceive.

Parle Products (P) Ltd. v. J.P. & Co., Mysore ( AIR 1972 SC 1359)[15]

Parle Products, the owner of the biscuit brand “Glucose,” known for its unique wrapper, sued the defendant for selling biscuits in packaging that looked similar. The Supreme Court found that an average consumer does not compare trade marks directly side by side; what matters is the overall impression. The defendant’s packaging was deemed confusingly similar, resulting in infringement.

The key principle involved was that the standard for deceptive similarity relies on overall impression and consumer perception rather than a direct comparison of marks.

Ruston & Hornby Ltd. v. Zamindara Engineering Co.(1969)[16]

In this case, the appellant, the owner of the trade mark “Ruston,” sued the respondent for using the mark “Rustam India” on similar products. The respondent claimed that adding “India” made the mark different. The Supreme Court disagreed and ruled that the use of “Rustam India” still constituted infringement because it created a misleadingly similar impression to “Ruston.”

Key Principle involved was that adding descriptive or geographical terms does not stop infringement if the main part of the trade mark is copied and may confuse consumers

K.R. Beri & Co. v. The Metal Goods Mfg. Co. Pvt. Ltd. & Anr (1980)[17]

The Delhi High Court ruled that just registering a trade mark does not give an absolute right if the mark has not been genuinely used in trade. The court pointed out that the owner must prove genuine and ongoing use of the trade mark. Since the plaintiff could not show any real use of the mark for several years, the court ordered its removal from the register.

This case reinforced that not using a trade mark without a valid reason can lead to its cancellation. It highlighted that trade mark protection is given not just for registration but for actual use in trade.

Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. & Ors., (2018)[18]

The Supreme Court dismissed Toyota’s appeal and ruled in favor of ‘ Prius Auto Industries Ltd.’

The Court supported the principle of territoriality, stating that trade mark reputation must be established in the country where protection is sought.

‘Toyota’ did not show that the “PRIUS” mark had gained recognition in India before 2001.

The evidence, including international magazines and online publications, did not convincingly demonstrate that Indian consumers were aware of the “PRIUS” brand before the defendants' use of it.Since Prius Auto Industries used the mark in good faith and before Toyota entered the market, there was no intention to deceive.

This case confirmed that transborder reputation must have clear recognition among Indian consumers to claim protection under Indian trade mark law. The doctrine of territoriality took precedence over the doctrine of universality, setting an important precedent in evaluating global brand reputation.

Conclusion

The concept of non-use of trade marks reflects the delicate balance between protecting proprietary rights and ensuring that the trade mark register remains an authentic record of active marks in commerce. Continuous and bona fide use is the cornerstone of trade mark validity, as it signifies the mark’s role in identifying source and maintaining consumer trust. Judicial interpretations, including cases such as KR Beri & Co v The Metal Goods Mfg Co Pvt Ltd and Ruston & Hornby Ltd v Zamindara Engineering Co., reaffirm that mere registration is not sufficient—use must be genuine, not token or strategic.

A critical analysis of non-use provisions demonstrates that they prevent unjust monopolisation of marks and encourage fair competition. At the same time, exceptions for special circumstances ensure that rights are not unfairly lost due to external barriers beyond the proprietor’s control. Thus, effective enforcement of non-use principles sustains the dual purpose of trademark law: protecting business identity while serving the public interest in a dynamic and competitive marketplace.

References

[1] World Intellectual Property Organization, Introduction to Trademark Law and Practice: The Basic Concepts (2nd edn, WIPO 1993)

[2] JN Nicholas Ltd v Rose and Thistle and another AIR 1994 CAL 43

[3] M Jenkins, ‘Introduction to Trademarks’ (2004, 800 PLI/PAT 57, 60)

[4] Lanham Act 1946, 15 USC § 1127

[5] Cornish WR, Llewelyn D and Aplin T, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (9th edn, Sweet & Maxwell 2019)

[6] Narayanan P, Law of Trade Marks and Passing Off (7th edn, Eastern Law House 2017)

[7] MJ Pvt Ltd Bombay v Sunkist Growers, Los Angeles,USA [1975] AIR 1975 Bom 243.

[8] Whirlpool Co and Anr v N R Dongre and Ors [1996]PTC (16) 583 (Del)

[9] Toshiba Appliances Co Ltd v Kabushiki Kaisha Toshiba [1994] IPLR 313 (Del)

[10] Hardie Trading Ltd v Addisons Paint and Chemicals Ltd [2003] 11 SCC 92.

[11] Imperial Tobacco Co of India Ltd v Registrar of Trade Marks [1968]AIR 1977 Cal 413

[12] Trade Marks Act 1999,s 47

[13] World Intellectual Property Organization, Understanding Industrial Property (Publication No 895E, WIPO 2020)

[14] Hindustan Pencils Pvt Ltd v India Stationery Products Co AIR 1990 Del 19

[15] Parle Products (P) Ltd v JP and Co, Mysore AIR 1972 SC 1359

[16] Ruston & Hornby Ltd v Zamindara Engineering Co AIR 1970 SC 1649 (SC)

[17] KR Beri & Co v The Metal Goods Mfg Co Pvt. Ltd AIR 1980 Del 186 (Delhi HC)

[18] Toyota Jidosha Kabushiki Kaisha v M/S Prius Auto Industries Ltd (2018) 2 SCC 1;(2017) 241 DLT 1 (SC)

Shreya Pal, Guru Ghasidas Vishwavidyalaya, Bilaspur, India