A doctrine in distress: a retrospect on the doctrine of prosecution history estoppel in Indian trade mark law

Abstract This article investigates the emergence, development and contested status of the doctrine of prosecution history estoppel within Indian trade mark law. Originating from American patent jurisprudence, the doctrine has increasingly influenced trade mark infringement and passing-off actions, with courts relying on representations made during registration and related proceedings to limit subsequent claims of exclusivity. The central claim of this analysis is that the embrace of, and resistance to, this doctrine in Indian courts reveals a deeper conflict between established adjudicative frameworks and the new influences of prosecution history, posing challenges of subjectivity and unpredictability that Indian courts must address. The article systematically reviews Indian case law, distinguishing between direct and indirect applications, and analyses circumstances in which courts have limited or declined to apply the doctrine based on equity, statutory requirements and public interest. It then situates the Indian experience within a comparative framework, drawing lessons from the debates over the doctrine’s efficacy in patent jurisprudence in the USA and the UK. The analysis posits that Indian courts’ ambivalence towards prosecution history estoppel may stem from structural concerns regarding subjectivity, unpredictability and the public law character of trade mark adjudication, rather than from mere conservatism. The article concludes by advocating a more conceptually robust, context-sensitive and substantive solution to the problem that ensures consistency and predictability without losing sight of the statutory objects of trade mark law.