In India, a trademark application can be filed either on a “proposed to be used” basis or by claiming prior usage of the mark in India. In view of opting to file an application based on prior use, an Applicant is required to include a User Affidavit along with their Form TM-A at the time of filing their application. Unfortunately, the process isn’t as straightforward as it might seem. Proving usage since the date claimed has become a crucial part of the registration process, since there are no established guidelines on the standard of proof of use. So, let’s delve into how to convince the Hearing Officers regarding the use of your mark in India.

The relevant provision of Rule 25 of the Trade Marks Rules, 2017 provides as follows –

  1. Statement of user in applications. — (1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.
  • In case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

Upon a cursory glance of the above provision, it seems simple enough – the law requires the Applicant to submit an affidavit attesting to prior use, accompanied by supporting documents. However, it does not shed any light on the standard of proof that needs to be met or what is considered acceptable as per law.

Over the years, the concept of ‘use’ of the mark in India has evolved rapidly. It has become quite broad since it does not only mean the client’s direct use of the mark in India, but it also encompasses factors such as awareness, knowledge and recognition of the mark among the Indian public.

Most commonly, one can submit documents such as web analytics showing Indian users, invoices of the goods/ services being sold/ offered in India, email exchange with an Indian client/ licensee, advertisements, marketing/promotional materials, and other related materials containing the subject mark, any press articles or publications in Indian media wherein the mark has been featured/referred, testimonials/reviews from Indian clients, social media presence showcasing Indian viewers and other such documents. In essence, one can submit any documentary evidence featuring the exact representation of the subject mark which can show relation of use of the mark in India. Further information regarding the usage documents and the common FAQs regarding Usage claims have been dealt in detail here.

Unfortunately, even when Applicants submit evidence dating back to the claimed date of use, the Learned Examiners/ Hearing officers often raise objections regarding the same during the Examination stage. One of the most common objections raised during show cause hearings is regarding the acceptability and validity of the evidence submitted, wherein despite most documents being acceptable as per the relevant provision of law, they are frequently being deemed inadequate by the Hearing officers.

Recently, in one of our cases, we submitted invoices demonstrating usage for the year claimed in the application, along with documents showing our products listed on e-commerce platforms in India, and other materials indicating continuous use. Being medicines, the same should have been more than adequate to admit the usage claim, however, the hearing officer disregarded this evidence stating that unless we could provide invoices for every year since our claimed date of use, the application would not be accepted. This case raises a pertinent question as to how current listings in e-commerce platforms cannot be considered as evidence of current use, when the products under our mark are made available for sale to consumers in India.

In recent times, Hearing officers have become increasingly particular regarding submission of usage proof by way of Sales invoices, failing which they are often unwilling to waive the objection which is rather surprising since neither the Trade Marks Act, 1999 nor the Trademark Rules, 2017specify the requirement of submitting invoices specifically or lists out any mandatory documents to be submitted as evidence of use. Additionally, the Hearing officers often refuse to provide much weightage to online presence even when it contains evidence of Indian users unless the same is accompanied by other documents indicating actual sale or services being offered under the subject mark in India such as Invoices.

This disregard of online presence and use of a mark in this digital era is completely unreasonable and the situation ought to change. However, only time will tell if the Indian Trade Marks Registry takes cognizance of this and sets clear standards of proof for use which accommodate use via online channels as well.

Regardless, here are a few pointers for you to overcome the objections in examination stage.

Here’s what you can do:

  1. If sales invoices are applicable to the products/ services you offer under the subject mark, make sure to include all the invoices you have in your records.
  2. If the same is not applicable to your case or if the invoices are not available, make sure to collect documents which prominently feature your subject mark along with the specific dates – evidence which pertain to Indian consumers/ users of your product.
  3. Try including documents whose veracity cannot be disputed or called into question – such as Government documents, Indian media publications, etc.
  4. If you have any licensing or distribution agreements with Indian entities regarding manufacturing/ sale/ distribution of the goods/ services under the subject mark ensure to include these as it evidences that legally binding agreements are in place to distribute the products to consumers in India.
  5. If there is any change in title of the subject mark, do ensure that the title flow is mentioned in the User affidavit in order to avoid confusion and potential objections.
  6. The above-mentioned being the most important ones, do include other evidence such as social media presence, brochures featuring the mark, reviews of your products, listings in ecommerce platforms, marketing data and such others in order to evidence your extensive use.

While the above-mentioned pointers would aid you in overcoming the objections raised at the hearing, in case of a well-known mark or to establish your mark has obtained a secondary meaning in the minds of consumers, a higher level of evidence is a pre-requisite.

India being a common law country, usage of a mark plays an important role in overcoming office action, opposition proceedings and in enforcement of rights. Hence, if you have commenced usage of your mark, it is important to file the application claiming use and while doing so, make sure to substantiate your user claim with as much relevant documentary evidence as possible to indisputably establish the use of your mark since this would help in avoiding any objections from being raised at a later stage.

Written by Keerthana K