NAVIGATING THE ESSENTIALS OF TRADEMARK USER AFFIDAVIT FOR SUCCESSFUL REGISTRATION

INTRODUCTION

Trademark is a sign or logo which a brand uses to advertise its products. Trademarks in India are regulated under Trademark Act, 1999. As per the act, trademark is defined in section 2[zb] as “mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others”.

Startups and other business work hard to gain good reputation and goodwill in the market. This reputation needs to be protected. The trademark represents the brand or its product as it is the face of it and so is of utmost importance for the businesses.

Although unregistered trademark can still subsist and have prevalence due to reasons of prior use and reputation in the market, generally protection from infringement can only be claimed for a registered trademark. There are several benefits for registration of trademark such as brand recognition and reputation, evidence for validity of the mark, priority in domain name, etc. Thus it is always recommendable to register trademark.

Registration of trademark involves several steps:  application preparation, filing of application, examination by trademark office, publication in journal, opposition proceedings and Registration. Application for registration can be classified in 2 parts on the basis of purposes, that are “claiming user date” and “Proposed to be used.” First category pertains to stage when trademark is already in use and the later is when the trademark is registered to be used in future. The use of a certain document, i.e. User affidavit is mandatory in the case of claiming user data. User Affidavit is an essential document and requires that the trademark has been in use continuously in the market. There are various stages where a user affidavit is required.

SIGNIFICANCE OF USER AFFIDAVIT

A user affidavit is a document compulsory for registration of trademark on the basis of “Claim to be used” for registration or claiming protection of such mark. Some of the key aspects regarding importance of user affidavit are:

1. Claiming priority rights: Prior use is given much relevance in India. A user affidavit is to be filed necessarily while registration of such trademark.

2. To prove distinctness: An applicant can prove that the said mark is not descriptive or is distinctive as it has been used extensively and continuously and is recognized in the public by that mark by filing user affidavit.

3. Oppositions: A user affidavit can be filed to prove the prior usage in opposition proceedings.

4. Examination reports: At the stage of examination report filing by the registrar, if registrar has any issue with distinctness of the mark, this document becomes a prima facie evident to prove the contrary.

5. Registration of Descriptive Trademark: By providing user affidavits, the applicant can claim its distinctness in the market and its history. In this way a descriptive trademark, which is generally barred by section 9 of trademark act is acceptable, provided applicant proves by the way of documents and other evidences prior usage and reputation of the trademark.

LEGAL IMPLICATIONS

The user affidavit is mandatory to be provided in accordance with these laws:

1. The trademark rules, 2017 brought some amendments. These rules mandated the attachment of user affidavit for registration of already in use trademark and also for claiming prior use. Filing of this document is to be done attaching some other documents. Rule 25 requires filing of a statement of claim of prior use attached with user affidavit. Rule 31 allows applicant to file user affidavit as evidence in opposition or rectification proceedings.

2. Trademark Act, 1999: This section deals with process of application for registration of trademark.  When claiming prior use, this application has to be attached with evidences which prominently includes a user affidavit. Section 34 of the act provides that prior use of trademark is prioritize than first applied.

CONTENTS OF USER TRADEMARK

The applicant is referred as ‘deponent’ in the user affidavit form. Here are the contents of user affidavit

1. Trademark: It is quite obvious to insert the trademark in the affidavit for which the affidavit is filed. Class of trademark also to be provided.

2. Applicant/ Deponent details: Name, address, nationality and other details of the applicant.

3. Goods or Services: The applicant has to provide details on the goods and services they deal in with the use of the trademark.

4. Date of First Use: Date of first day the applicant started using the said mark for its goods or services.

5. Territorial Use: The specific geographical area where trademark is being used.

6. Date and Signature: The affidavit must contain signature of applicant or his represtative along with date of signing.

7. Evidences and Documents: The applicant has to attach evidences and documents with its affidavit to prove continuous use of the said mark for its goods or services.

There is no specification provided anywhere for documents, some of the documents which can be provided are;

·         Pamphlets, brochures, advertisements in newspapers or magazines, media publications etc. to provide evidence on use of such trademarks

·         Invoices, order letters, bills of goods, etc.

·         Annual sale figures from business with use of this trademark

 The affidavit must be notarized and be printed on a non-judicial stamp paper of 100rs

8. Declaration: Declaration at the end of the form that all the contents are true to the best of the knowledge of deponent.

CONCLUSION

Thus user affidavit has a vital role to play in securing the claim of prior use trademark. An important legislation in this regard was Trademark Rules 2017 which made it mandatory to provide user affidavit along with application form TM-A for registration of their trademark, this provision has its own importance when determining prior user. Prior to this, user affidavit was not mandatory and was required as per the discretion to ask for such affidavit.