Introduction

Trademark law in India is designed to strike a careful balance—protecting brand identity while encouraging fair competition and market access. However, recent trends in trademark enforcement suggest a growing imbalance. Increasingly, trademark proprietors are issuing cease-and-desist notices or legal threats against applicants who have merely filed trademark applications on a “proposed to be used” basis, even before any commercial use has begun. This trend raises fundamental legal and policy questions. Can trademark rights be enforced before a mark is actually used? Is it legally justified to issue infringement notices when a mark is still under examination? And crucially, who has the authority to determine similarity and registrability at this preliminary stage—the Trade Marks Registry, private parties, or the courts? This blog examines the phenomenon of premature trademark enforcement in India, analyses the legal status of “proposed to be used” marks under the Trade Marks Act, 1999, and highlights the central role of the Trade Marks Registry in adjudicating similarity and registrability disputes.

Legal Status of “Proposed to Be Used” Marks Under Indian Law

Section 18 of the Trade Marks Act, 1999 allows 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. Applications filed under the category “proposed to be used” expressly acknowledge that the mark has not yet entered the marketplace.

Such applications imply three critical legal realities:

• The mark has not been commercially used
• No goodwill or reputation has been established
• There is no existing consumer association with the mark

Indian trademark law recognizes intention to use as a valid basis for seeking registration, but it does not treat such intention as equivalent to enforceable trademark rights. An application is merely a request for statutory recognition, not proof of proprietary entitlement. This distinction between filing and acquiring rights is foundational to trademark jurisprudence, yet it is often ignored in aggressive pre-litigation enforcement strategies.

Trademark Rights: The Difference Between Registration and Use

Trademark rights in India arise from two distinct sources:

1. Statutory rights through registration under the Trade Marks Act
2. Common law rights through actual use, enforced via passing-off actions

Section 28 of the Act grants exclusive rights only upon registration of the mark. Until registration is granted, an applicant does not enjoy statutory monopoly rights. Filing an application—by itself—does not confer enforceable exclusivity. Similarly, passing-off actions are premised on the existence of goodwill, misrepresentation, and resulting damage. These elements presuppose actual use of the mark in commerce. A “proposed to be used” mark, by definition, lacks market presence and consumer recognition, making passing-off claims legally untenable at that stage. Therefore, enforcement claims directed at unused marks are not merely premature—they are structurally weak within the framework of trademark law.

The Rise of Premature Legal Notices

Despite this settled legal position, there has been a noticeable increase in trademark owners issuing legal notices against applicants at the application or examination stage. These notices often allege infringement, deceptive similarity, or dilution, even before:

• Examination by the Trade Marks Registry
• Advertisement of the mark in the Trade Marks Journal
• Invocation of statutory opposition proceedings

Such actions create several systemic concerns. For startups, small businesses, and first-time entrepreneurs, legal notices can have a chilling effect, forcing withdrawal or settlement irrespective of legal merit. Trademark law, in such cases, is transformed from a protective mechanism into a tool of commercial intimidation. Premature enforcement also undermines the statutory framework by bypassing the carefully designed procedures under the Act. Instead of allowing institutional adjudication, private parties attempt to assert unilateral determinations of similarity and infringement.

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The Trade Marks Registry as the Primary Adjudicatory Authority

A key question arises in these disputes: who is legally empowered to determine whether two trademarks are similar or deceptively similar?

The Trade Marks Act vests this responsibility primarily in the Trade Marks Registry. During examination, the Registry evaluates:

• Phonetic, visual, and conceptual similarity
• Nature and classification of goods or services
• Likelihood of consumer confusion
• Distinctiveness and public interest considerations

Further, the Act provides a comprehensive opposition mechanism post-advertisement, allowing any aggrieved party to challenge the registration through structured pleadings and evidence. When legal notices are issued at the pre-registration stage, they attempt to pre-empt this statutory process. Such conduct effectively replaces institutional scrutiny with private opinion, which the Act neither contemplates nor endorses.

Judicial Approach to Early-Stage Trademark Disputes

Indian courts have consistently emphasized that trademark disputes must be evaluated contextually, with due regard to use, reputation, and likelihood of confusion. Courts have also cautioned against granting monopolies over common, descriptive, or dictionary words unless secondary meaning and acquired distinctiveness are clearly established. While judicial intervention may be warranted in exceptional cases—such as dishonest adoption, bad faith filings, or blatant misappropriation—routine interference at the application stage is generally discouraged. Courts have recognised that the Registry is the first forum of determination, and judicial review is supplementary rather than substitutive. This judicial restraint reinforces the principle that trademark enforcement should be evidence-based and procedurally grounded, not speculative or anticipatory.

Common Words, Vernacular Terms, and the Public Domain

Another recurring feature of premature enforcement is the attempt to claim exclusivity over commonly used words, including vernacular and descriptive expressions. Trademark law seeks to maintain a delicate balance between protecting distinctive marks and preserving the public domain. Granting excessive protection to generic or widely understood terms restricts competition and undermines the entrepreneurial ecosystem. Indian jurisprudence has repeatedly held that common words—especially those derived from Indian languages—cannot be monopolised unless they have acquired a strong secondary meaning through extensive and exclusive use. Premature enforcement in such cases not only weakens legal credibility but also risks overreach into areas meant to remain free for public use.

The Need for Responsible Trademark Enforcement

Trademark protection is undeniably vital in a competitive economy. However, enforcement must be proportionate, principled, and aligned with statutory intent. Issuing legal notices against “proposed to be used” marks—without use, registration, or evidence of goodwill—undermines the legitimacy of trademark law.

A responsible enforcement strategy would involve:

• Allowing the Trade Marks Registry to conduct examination
• Availing statutory opposition and rectification remedies
• Approaching courts only where actual infringement or passing off is demonstrable

Such an approach preserves both trademark rights and commercial freedom, ensuring that enforcement remains a shield rather than a sword.

Conclusion

Premature trademark enforcement reflects a growing tension between intellectual property protection and market access in India. While trademark owners are entitled to safeguard their brands, the law does not sanction intimidation or circumvention of statutory processes. Marks filed as “proposed to be used” exist at a pre-rights stage, where enforcement claims must be approached with restraint and legal clarity. The Trade Marks Registry remains the primary authority to assess similarity and registrability, and its role should not be diluted by premature private action. A mature trademark regime is one that protects innovation without stifling it. In trademark law, restraint at the enforcement stage is as critical as vigilance in protection.