When it comes to the prosecution of a trademark application, the filing of evidence before the Registrar of Trademarks plays a critical role. Evidence is required to support various claims made by applicants and opponents throughout the trademark process. This article will explore the significance of filing evidence, the types of evidence required, and the importance of submitting an affidavit to ensure the authenticity and reliability of the evidence presented.
At the time of filing a trademark application, if an applicant claims the use of a trademark, they must submit a declaration stating the first date of use in the DD/MM/YY format. To support this claim, evidence must be provided, showcasing the specific class of goods or services for which the mark is being used and the claimed date of use. This evidence demonstrates the applicant's intention to effectively utilize the trademark.
During the trademark examination process, evidence of use may be requested if there is a conflicting mark on record with the Trademarks Registry as per Section 11 of the Trade Marks Act, 1999 .The purpose of this requirement is to determine the legitimacy and distinctiveness of the mark under consideration. Additionally, if the applicant faces an objection under Section 9 of the Act, proving the acquired distinctiveness or secondary meaning of the trademark becomes crucial. This can be achieved by filing evidence demonstrating extensive use of the mark, accompanied by an affidavit and supporting documents.
In opposition proceedings, both the applicant and the opponent are required to submit evidence during the evidence stage. Similar to the previous instances, this evidence is filed alongside an affidavit and relevant documents. This evidence allows both parties to support their claims and strengthen their arguments throughout the trademark opposition process.
An affidavit serves as a legal declaration made under oath, confirming the authenticity and veracity of the evidence provided. It ensures the accuracy and reliability of the information presented by the applicant, opponent, or registered proprietor. By submitting an affidavit in support of the documents, credibility is added to the evidence and eliminates the possibility of misrepresentation.
Section 129 of the Trade Marks Act 1999 explicitly states that evidence in any proceeding before the Registrar shall be given by affidavit. This provision offers protection to the Registrar, trademark lawyers, and trademark agents, as it establishes a clear requirement for filing evidence supported by an affidavit and relevant documents. Without this mandatory requirement, there is a risk of submitting fabricated documents that may undermine the credibility of the entire trademark process.
Recently, the case of Kamdhenu vs The Registrar of Trademarks raised concerns about the interpretation of Section 129. In this case, the applicant filed an application for the registration of the trademark "Kamdhenu" as a well-known trademark. However, the applicant refused to file an affidavit in support of the application, which eventually led to the rejection of the application by the Registrar. Surprisingly, the Honorable Judge, while referring to Rule 124 of the 2017 Rules, stated that an affidavit may not be mandatory if sufficient evidence is provided.
To safeguard the integrity of the trademark process, it is essential to uphold the requirement for an affidavit when filing evidence. While oral evidence may be taken into consideration at the Registrar's discretion, it cannot replace the need for an affidavit. Section 129 of the Trade Marks Act clearly establishes that evidence must be given by affidavit, ensuring a standardized and reliable approach to the submission of evidence.
If the interpretation of evidence as solely "documentary evidence" without the support of an affidavit becomes widespread, it could create significant loopholes within the trademark practice. Evidence of use required to establish the use of a trademark or evidence submitted during opposition proceedings may be considered valid without the credibility and assurance of an affidavit. Such an interpretation would undermine the reliability of the trademark process and compromise the overall effectiveness of trademark protection.
The filing of evidence before the Registrar of Trademarks is a crucial requirement that ensures the legitimacy and reliability of trademark applications and opposition proceedings. By submitting an affidavit alongside relevant documents, applicants, opponents, and registered proprietors demonstrate the authenticity of their claims and add credibility to their evidence. Upholding the mandate of Section 129 of the Trade Marks Act is vital to preserve the integrity of the trademark system and ensure a fair and reliable process for all parties involved.
The process of trademark registration is a time taking and technical process, it is always advised to seek help of professional and experienced trademark attorneys like Compliance Calendar as we tailor the work as per your needs. We will not only help you register your trademark but also protect your mark at all the stages of registration. For any further clarifications and suggestions, kindly connect on 9988424211 or mail at info@ccoffice.in.
Filing evidence supports various claims made during the trademark process, such as proving prior use of a trademark, establishing distinctiveness, or supporting opposition proceedings. It ensures the legitimacy and reliability of trademark applications and oppositions.
Evidence may include documents demonstrating the use of a trademark, such as sales invoices, advertising materials, or product packaging. Affidavits confirming the authenticity of the evidence are also commonly required.
Yes, Section 129 of the Trade Marks Act explicitly mandates that evidence in any proceeding before the Registrar shall be given by affidavit. This requirement ensures a reliable approach to the submission of evidence.
Failure to comply with the requirement for an affidavit may lead to the rejection of trademark applications or opposition proceedings. It undermines the credibility of the evidence presented and compromises the integrity of the trademark process.
While oral evidence may be considered at the Registrar's discretion, it cannot replace the need for an affidavit. Section 129 establishes that evidence must be given by affidavit, ensuring a standardized approach to evidence submission.
Professional trademark attorneys can help gather relevant evidence, prepare affidavits, and ensure compliance with legal requirements. They provide guidance throughout the trademark process to help clients protect their trademarks effectively.