Registrar of Trade Marks v. J.B. Williams & Co. Inc.

Use in Trade Is a Precondition for Registration

Trademark protection requires actual commercial use or intent to use

Parties Involved :

⦁ Appellant: Registrar of Trade Marks – the statutory authority responsible for the maintenance of trademark records and approval of registration.

⦁ Respondent: J.B. Williams & Co. Inc. – a foreign company engaged in the manufacture and sale of personal care products (notably after-shave and cologne).

Background & Facts :

J.B. Williams & Co., a U.S.-based company, applied to register the trademark "AQUA VELVA" in India for its toiletry products. The mark was not used in India at the time of application.

The Registrar refused the application under Section 18(1) of the Trade and Merchandise Marks Act, 1958, arguing that the company had no bona fide intention to use the mark in India and no actual use had been made.

J.B. Williams appealed this refusal before the High Court.

Legal Issue :

Whether a foreign applicant without existing use or a clear intention to use the trademark in India can validly register the mark under Indian trademark law.

Court’s Observation :

The court emphasized the "use in relation to goods" requirement. It held:

⦁ Trademark registration is not merely to secure a name but to protect marks that are or will be used in the market.

⦁ If there is no commercial activity or genuine intention to use the mark in India, it cannot be allowed registration.

⦁ The objective of the Trade Marks Act is to protect trade and prevent confusion, not to allow monopoly over names without any market presence.

Final Decision :

The High Court upheld the Registrar’s refusal, stating that:

⦁ Mere registration without any intended use goes against the scheme of trademark law.

⦁ Trademark is a commercial tool, not a decorative label to reserve rights indefinitely.

Legal Principle Established :

⦁ Intention to use or actual use is crucial to secure and retain trademark rights in India.

⦁ The system discourages trademark warehousing or blocking of marks by entities without presence or plans to enter the Indian market.