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EVIDENCE OF USE OF A TRADEMARK | Company Vakil

After the application for registration of trademark has been submitted, it is sent to an examiner whose duty is to check that the details of the application are correct and if not, he raises an objection for the same. Absolute grounds and Relative grounds of refusal are some of the reasons for raising an objection for registration. Section 9 of the Trade Marks Act, 1999 talks about absolute grounds for refusal of a registration of trademark and it says that:

(1) the Trademarks which:

  1. Are devoid of any distinctive character, that is to say, not capable of distinguishing goods or services of one person from those of another person;
  2. Consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the services….;
  3. Consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,

shall not be registered.”

What is Evidence of Use?

A trademark which offends Section 9 (1) of the Act may still be registered if it can be shown that on the date of application the mark has, in fact, acquired a distinctive character as a result of the use made of it.

In any proceeding before the Registrar, evidence is given by way of an affidavit. However, the Registrar may, if he thinks fit, take oral evidence, in lieu of, or in addition to, such evidence by affidavit. In case Evidence of use of the trademark in conformity with user statement mentioned in the application, has already been given by way of affidavit of the applicant, the examiner may take this into account while raising objections.

In assessing the distinctive character of a mark in respect of which registration has been applied for, on the basis of evidence of use provided by the applicant, the following factors shall be taken into account:

  • Market Share held by the Mark

The market share held by the mark in a particular trade can be used as an evidence of use for the applicant. It is easier for large businesses to show their market share and the smaller the business is, the harder it is for them to show the relevancy of their market share. 

  • Geographical Widespread

The applicant can also put as evidence of use of a trademark if the use of the mark is intensive, geographically widespread and is long- standing. By geographically widespread, it means that the trademark is well known and covers a large area or is known by a large group of people.

  • Amount Spent in Advertising and Promotion

The amount spent by the applicant or invested by the undertaking in promoting or advertisement of his mark is another example of evidence that can be used to show the usage of the mark. Expenditure on advertisement and promotion shows interest of the applicant. The expenditure is broken down and submitted under different categories.

  • Recognition of the Mark by Relevant Class of Persons

The proportion of the relevant class of persons, who, because of the mark, identify goods as originating from a particular undertaking can be showed as evidence of use as well. For example, the recognition of the automobile brand Audi through its four interconnected circles. A huge portion of public recognized audi through that trademark and thus it make it a good evidence of use.

  • Trade Evidence

The statements from Chambers of Commerce and Industry or other trade and professional associations can also be used to show the use of trademark as they are statements from experts in the trade and can attest to the distinctive character of the mark.

  • Websites and Domain Names

Domain names are unique for every business as no same domain name is assigned to two owners. If a domain name or website is used prominently for selling of goods or rendering services, it can be shown as evidence of use as well.

  • Invoices, Brochures, etc

Invoices, brochures, pamphlets, catalog, price lists etc in relation of goods or services, for which the application of registration has been given, can be used to support the application. It also shows that the mark has been in use to such goods or services. These exhibits which are submitted must be of the date prior to the date on which the application was filed.

  • Sales Turnover

The turnover of business through sales of goods or through the services provided can also be shown as evidence of use. If the turnover is great, the mark is more likely to be accepted. If the mark is used for a period of about five (5) years before the date of application, it is enough to show the use of the mark, if it is less it would depend upon the number of years and if the amount is considerable, it should be enough to support the application. It is to be kept in mind that some industries like social networking sites, cannot have sales turnover as a scale to judge the business, in these cases, other elements like number of account holders, number of subscribers, number of users can be taken in to consideration to show the usage of the mark.

  • Surveys

If done according to the rules of the trademark, customer surveys can also work as a good tool to show the use of a mark. It can be submitted as evidence as it shows that customers or public in general knows about the mark prior to the registration of the same. Examples of survey questions which can help to understand this mode of evidence is, “What does this symbol signify to you?” or “Have you seen this logo anywhere?” 

These were some ways through which an applicant for registration of a trademark can show that the mark is well-known and it has been in use prior to the application. These evidences are submitted through affidavits and after considering the same, the Registrar either accepts the mark or rejects it. The more evidence of use an applicant can submit, the more chances he has of his application getting accepted. The Trade Mark Rules 2017 prescribes the manner in which the affidavits for the evidence are to be executed. The above mentioned factors help the applicant in getting his trademark registered without much of a hustle.

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