Section 31 of the Trade Marks Act, 1999 states that in all legal proceedings, the original registration of a trade mark shall be prima facie evidence of the validity thereof. Most brand owners read the words prima facie evidence of validity and stop reading. They treat the registration certificate as a shield. They expect the Court to open the proceedings from a presumption that the mark is good and to require every challenger to carry the full burden of disproving that presumption before anything else happens.
That reading is wrong, and the Delhi High Court has been writing it down as wrong for over a decade. The consequences of holding that reading fall in litigation, at the interim injunction stage, when the strategic commitment has already been made and the cost of revision is at its highest.
What Prima Facie Actually Means in Indian Trademark Litigation
The settled position under Section 31 Trade Marks Act India is that prima facie is not conclusive. It is an evidentiary starting point, not an end point. Where a mark is descriptive, laudatory, or weak, the Court is competent to look behind the registration certificate and assess the mark’s validity at the interim stage itself, registration notwithstanding. The certificate opens the case. It does not decide it.
The Delhi High Court has expressed this with increasing clarity across a decade of trademark jurisprudence. In Kapil Goyal v. Registrar of Trade Marks, C.A.(COMM.IPD TM) 15/2025, decided on 9 January 2026, the Court reiterated that for a mark to be descriptive under Section 9(1)(b) the reference to character or quality must be direct, plain, and immediately apparent rather than requiring multiple steps of reasoning. The Court has shown consistent willingness across recent Section 9 and Section 11 decisions to examine the strength of a registered mark on its merits rather than treat the certificate as an answer to the question the proceedings are asking.
The practical implication is that the registration certificate a brand owner files with the plaint is the beginning of the Court’s inquiry into whether the mark deserves interim protection. It is not, by itself, sufficient to obtain that protection where the defendant raises a credible Section 9 challenge.
The Bhole Baba Authority and What It Actually Decided
The leading authority on the limits of Section 31 remains Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd., decided by the Division Bench of the Delhi High Court in 2011. Every brand owner in India who holds a registration over a word with cultural, descriptive, or laudatory associations should have read it.
The Court in Bhole Baba declined to confer exclusive rights over the word KRISHNA for dairy products. The Bench reasoned that Lord Krishna’s closely linked association with milk and butter in common Indian cultural knowledge would dilute any proprietary claim a single trader could assert in the dairy category. The cultural significance of the word was so pervasive in the relevant consumer context that exclusive appropriation by one trader would be inconsistent with the purposes trademark law serves.
The doctrinal precision of the decision is as important as its outcome. The Court clarified that the registration the appellant held was not for the word KRISHNA in isolation but for the word as it appeared in a distinctive stylised form. The narrow right that registration actually conferred, protection for the mark in its registered form, was very different from the broad monopoly the appellant had assumed the certificate delivered. That distinction between the right the registration confers and the right the brand owner assumes the registration confers is the gap in which litigation strategy succeeds or fails.
A brand owner who believes the KRISHNA registration protects the word in all forms and all contexts will build an enforcement strategy on that assumption. The Court will correct it at the interim injunction hearing. The correction at that stage, after the litigation has been committed and the cease and desist letters have been sent and the relationship with the defendant has been permanently altered, is the most expensive correction available.
The Three Places the Financial Consequences Fall
Treating the registration certificate as decisive is the most expensive misreading of Section 31 Trade Marks Act India in current practice. The financial consequences are predictable and they fall in three distinct places.
The first is in the valuation of the brand. Brands built on descriptive, laudatory, or category-suggestive marks are mispriced assets. They look protected on the balance sheet. The registration certificate is there. The renewal is current. The IP schedule in the due diligence data room shows the mark as registered and valid. What the IP schedule does not show is that the mark would not survive a Section 9 challenge in litigation. The premium the brand earns from the registered trade mark is real only if the underlying mark has the strength to sustain the registration when challenged. The gap between the registration’s nominal value and its litigated value is a balance sheet risk that most companies have not measured and most due diligence processes do not surface.
The second is in the pre-litigation strategy. Cease and desist letters that rest on “we are registered, you must stop” are read by sophisticated defendants exactly the way the Court now reads them. As openings, not conclusions. The defendant who receives such a letter and has competent trademark counsel will respond with a Section 9 attack identifying the descriptive or laudatory character of the mark and a rectification petition instituted in the High Court. The cease and desist that was supposed to end the problem has begun a proceeding that parks the infringement suit under Section 124 until the High Court decides validity. The brand owner who sent the letter assuming the registration was decisive is now defending the registration it assumed was unchallengeable.
The third is at the interim injunction stage. The acquired distinctiveness proviso to Section 9 is the statutory rescue clause that saves descriptive marks by proving that the mark has acquired distinctiveness through use. But it requires affirmative evidence. Survey data. Sales figures across a sustained period. Advertising spend in India. Market recognition among the relevant consumer class. In the majority of infringement suits where a descriptive mark is being enforced, this evidence is not pleaded at the interim stage. By the time the defendant raises Section 9 at the reply stage, the plaintiff is assembling affidavits that should have been filed with the plaint. The Court denies the injunction. The commercial momentum of enforcement is lost. The litigation strategy that was designed around the interim order has to be rebuilt from a weaker position.
What Foreign Brand Owners Must Understand
For foreign brand owners enforcing in India through Madrid Protocol registrations or national phase filings, Section 31 Trade Marks Act India represents a structural feature of Indian trademark litigation that has no close equivalent in most home jurisdictions.
India is, on paper, a register-based trademark jurisdiction. Registration confers rights. Priority of registration matters. The register is the starting point of any trademark dispute. That architecture is familiar to brand owners from common law and civil law jurisdictions alike.
In litigation, however, India operates as a use and distinctiveness jurisdiction. The Court’s assessment of whether a registered mark deserves interim protection depends on whether the mark has the strength to survive challenge, which in turn depends on the distinctiveness the mark has acquired through use in India. The Madrid Protocol designation that delivered an Indian registration in three months did not deliver Indian distinctiveness. Indian distinctiveness has to be built in India through commercial use, evidenced through Indian market data, and pleaded through Indian court submissions. The registration is the starting point. It is not the answer.
The foreign brand owner who instructs Indian counsel for enforcement without understanding this distinction enters the proceedings with an enforcement strategy calibrated to the nominal protection the registration confers rather than the litigated protection the mark can actually sustain. That misalignment surfaces at the interim injunction hearing, in front of a defendant who has been advised correctly and a Court that has been applying the Bhole Baba reasoning for over a decade.
The Distinctiveness File as an Annual Discipline
For founders, for in-house IP teams, and for the portfolio managers who advise them, the central practical lesson from the Section 31 framework is that the acquired distinctiveness file is an asset that must be built before litigation, maintained actively during the commercial life of the brand, and refreshed regularly to remain useful at the moment it is needed.
The cheapest moment to build the distinctiveness file is before the brand faces any challenge. Sales data, advertising records, market surveys, consumer recognition evidence, third party media coverage, industry recognition, retailer relationships, customer correspondence. All of it assembled from the beginning of the brand’s commercial life, maintained in a form that can be produced in litigation, and retained with dates and provenance intact. The most expensive moment to build it is after the defendant has filed a written statement that puts the mark on trial, when time pressure is acute, gaps are being discovered, and the assembling exercise is driven by the other side’s pleading rather than the brand’s actual commercial story.
For in-house teams managing portfolios of registered marks, the Section 9 audit is the exercise most consistently delayed and most consistently regretted. Identify the descriptive marks in the portfolio. Identify the laudatory marks. Identify the category-suggestive marks whose registration has never been stress-tested against a Section 9 challenge. For the commercially significant ones, build the acquired distinctiveness evidence now. For the rest, decide honestly whether the carrying cost of maintaining an indefensible registration exceeds the cost of a rebranding exercise or a fresh mark filing in a defensible category.
The acquired distinctiveness file is not an immutable asset built once and preserved indefinitely. Survey data ages. Sales data three years old is treated by the Court as historical rather than current. The portfolio that built its distinctiveness file in 2020 and has not refreshed it is fighting current litigation with evidence that reflects a market that no longer exists in the same form. The audit is an annual discipline, with the same logic as a financial audit. The asset has to be capable of withstanding scrutiny at the moment scrutiny arrives, not at the moment it was first assembled.
