What is Evidence of Use for Trademark Registration?

As per the trademark regime in India, a trade mark means any sign, mark, name, device, or combination thereof used by an entity to identify and distinguish its goods or services from those provided by another entity. The basic purpose of a trademark is to permit the consumers to identify goods and/or services bearing a particular source in the market and affiliate them with an associated brand or business. Geographically, legislation that is capable enough to protect the right of the brand from any misuse and give rights to the owner of the trademark as well as allow them to take legal action in case of the trademark being used without their permission can enter the picture after the registration.

Section 2(1)(zb) of the Trade Marks Act, 1999 defines a “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and –

(i) in relation to Chapter XII (other than Section 107), a registered trademark or a mark used in relation to trade goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this act among used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services as the case may be and some person having the right either as a proprietor or by way of permitted user to use the whether with or without any indication of the identity of that person and includes a certification trademark or collective mark.

What is Evidence of Use for Trademark Registration?

Against the foregoing, it may be challenging to establish granting proof. In India, when one applies to register a trademark, that application may be challenged to the rule of evidence of use. This often arises when the applicant has allegedly used the specific mark prior to making an application for the said mark.

If such a trademark was already being actively used in the northern territory of the concerned application filing date, such a piece of evidence is a strong defense against other parties wishing to apply and register the same trademark. The evidence of use can also be a supportive deterrent in the issues before the Registrar of Trademarks or during opposition proceedings. This can be evidence that the mark is used so as to have acquired secondary meaning and is connected with the applicant’s goods. When a trade mark application based on prior use is filed, it is quite often necessary also to provide the supporting evidence in the form of a “user affidavit”.

Such evidence is to be contained in the application and shall be regional and chronological to the claim of use of the trademark. This is more so because, in the case of such trademarks, the evidence of use is essential especially for descriptive marks and for those marks that do not have distinctiveness from the beginning. Even more so, if the mark is not in use, the applicant may choose to file under the “proposed to be used” category of filings without being obliged to come with any evidence from the outset.

1. Market share – Market presence of the company and the share its products hold under the name to be registered is evidence of use of trademark.
2. Visiting cards – Visiting cards help in building the image and identity of a business and thus acts as an evidence of use.
3. Advertising expenses – marketing expenses or expenses incurred on advertising the products bearing the trademark name is an evidence that a trademark is used.
4. Trade evidence – Affidavits or statements by trade experts attesting the unique personality of the trademark is also a good evidence of use.
5. Sales turnover – A trademark application can also be supported by providing the sales turnover of a reasonable period for evidence of use of the trademark.
6. Customer survey – Opinions and preferences of the customers through a survey confirming the use of a trademark by the company is also an evidence.
7. Brochures, price lists and invoices – Brochures of exhibitions or pamphlets of offers, price lists and invoices of sales of products and services under the trademark is an evidence of use.
8. Domain names and websites – Domain name and website displaying the name and details of trademark is an evidence of use.
9. Storage and packaging – Photoshoots or photographs of product samples or their packaging and storing the same products under the trademark name is also an evidence of use.
10. Supply contracts and shipping documents – Formal documents bearing the name of the trademark and showing the use of the trademark under which the goods and services are shipped or transported or supplied can be submitted for evidence of use.
11. Tax payment records – Legal records and tax returns copies also serve as evidence of use of a trademark.
12. Licensing agreements and sale contracts – Agreements and contracts showing the provision of goods and services for a price or consideration under a trademark name is also an evidence.
13. Press publications or review reports – Media coverages and product reports or even blogs and articles or social media marketing campaigns promoting the trademark of the business can also be submitted.
14. Customer feedback – Client and customer feedback affirming the use of a trademark is evidence of use.
15. Show cards or display boards like hoardings also give evidence of use.
16. Any documentary proof of an event sponsored by the proprietor using trademark seeking registration.

Importance of Submitting Evidence Of Use

Providing evidence of use is very important while applying for a trademark, as it enhances the claim of ownership and shows rights. Hence, presenting evidence of use ensures that the trademark application remains solid and strong enough to face legal challenges. This assistance is a convincing argument for the registration, protection, and enforcement of Indian trademarks, too, and helps prove attempts at building the brand. The following points help explain the need to present proof of use in the Indian Trademark Law regime.

1. Proof of Earlier Use – Under the “first-to-use” doctrine incorporated under the laws of India relating to trademarks, the party which first uses the mark has superior rights, although not automatically the party which first gets the mark registered. Such evidence of use proves the registrant’s ownership by showing that the mark was in use in commerce before any competing use.
2. Dismissing Opposition – When the third party opposes the trademark application that you filed, evidence of use may strengthen your position in the sense that it shows the application of the mark to the business and the business’s association to it.
3. Acquiring Distinctiveness – Evidence of usage tries to prove that those trademarks which are originally generic or descriptive have acquired a degree of recognition among consumers into a secondary meaning. This actually proves that the consumers associate your trademark to the services or products that your business offers.
4. Eliminating Objections – More commonly on the flip side of the coin, proof of use is also correctly looked for to overcome objections raised by the Registrar of Trademarks on grounds of lack of distinctiveness or conflict with prior trademarks. Providing such evidence serves to strengthen and validate the usage of your trademark in the marketplace.
5. Identification of Facilitation in the Registration of the Existing Marks – In the registration procedure of a trademark that has existed for a long time, the use evidence would thus be an additional argument to show that the mark is not new or only “intended to be used”.
6. Stricter Protection under the Legal Aspect – A mark in which widespread use is claimed is more likely to be upheld in the courts than one that does not have such evidence. In trademark disputes, courts customarily favor the party that presents evidence of earlier and ongoing use of the mark.
7. Addressing Bad-Faith Registrations – The submission of use evidence in opposition or cancellation proceedings helps to prove that you own a similar trademark to an existing one.
8. Strengthening Foreign Pets Applications – Use evidence comes in handy when making foreign applications for trademarks within the Madrid Protocol, as it shows the mark is already in use and recognised in the country of origin.

Conclusion

A very important step within the procedure of trademark registration is evidence of use. That constitutes a very important requirement for the protection of a trademark in some countries, such as India, where full protection is given on the basis of the first to use the trademark. It seems to be necessary within the investigation of the legality, distinctiveness, and goodwill of a mark. One way or another, it offers crucial support with respect to ownership claims, counterclaims, or guarantees of monopoly.

In the context of fierce competition in the Indian market, from the most practical perspective, the ability to show that a particular trademark has been used in commerce often decides whether the rights are retained or lost in any legal proceedings. Not just by the statement of use but by ample proof such as sales invoices, brochures, and labels or existing on the web, the registered owner of a trademark is able to demonstrate that his trademark is more than just an abstract concept.

Evidence of use answers many of the traditional hurdles that are encountered while applying. For instance, when a trademark is considered as merely descriptive or weak, showing evidence of years of use of the trademark in the relevant market and recognition of the trademark as originating from a specific source can prove acquired distinctiveness. Also, in any case of opposition or objection, evidence of previous and current use forms a solid base for refuting counterclaims based on the conflict or allegations of bad faith.

Evidence of use in relation to a trademark improves one’s ability to enforce it. In theory, courts and administrative bodies are usually the first to protect the interests of the party that possesses and presents use-based entitlements rather than merely registration-based ones. This brings to light the need to keep proper records of how a trademark is used in actual commerce. Evidence of use is one and the same as working to protect the mark from misuse by third parties and protecting while working to promote the mark by furnishing a counter-legal attack on any infringement or dispute.

For internationalisation-focused firms, adequate documentation of use enhances their cases under other international treaties. It builds confidence in the application and indicates that the trademark is recognized in its country of origin, thus having a higher possibility of registration in other countries.

In a nutshell, use in commerce serves as more than a statutory requirement in trademark registration; it also fosters a competitive advantage. This is so because it reinforces the company’s claim to having monopoly rights over a trademark, aids in achieving distinctiveness, and confers rights that may be enforced in a court of law. By focusing on the tracing of growth and establishment of the trademark in the market, business people protect their ideas but also improve the image and value of the product in the market. Therefore, as a reasonable course of action, such companies should avoid complacency and instead emphasize keeping a well-recorded history of the trademark journey to be ready to protect their rights when aggressive competition arises.

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