Affidavit of Use while filing Trade Mark Applications in India
India, being a ‘first-to-use country’ for trademark protection, places significant importance on claiming prior usage of a trademark during the application process. As per The Trade Marks Act, 1999, prior use of a trademark means employing the mark for the sale of goods and services on priority use basis. To substantiate a claim of prior use, an applicant must submit a notarized Affidavit of Use, also known as a Statement of Use to the Indian Trade Mark Office while filing the Trademark Application.
According to Section 3(3) of the General Clauses Act, 1897, an affidavit consists of a declaration made by an individual legally authorized to affirm rather than swear. The affiant provides testimony affirming that the statements and facts presented are true and accurate to the best of their knowledge. Rule 25(10) of the Trade Marks Rules, 2017, defines the mandatory requirement for submitting the Affidavit of Use when filing a trademark application. Merely claiming prior use is insufficient in the Trade Mark Application, the applicant must submit a notarized affidavit along with supporting documents of usage to the Indian Trade Marks Office demonstrating use of the mark in commerce. Documents that substantiate prior usage of the mark include ‘sales invoices and receipts, purchase orders, advertising and marketing materials, product packaging and labels, website screenshots, domain name registration certificate, business correspondence, catalogues and price lists, brochures, and flyers etc’.
When an Affidavit of Use is Required in Trademark Applications
In situations where an applicant files a trademark application under Section 18 of the Trade Marks Act, 1999, claiming a user date, it signifies that the applicant has been using the mark before the date of filing the application. In these instances, it is mandatory, according to the statutory provisions of the Act and the trademark rules, for the applicant to submit a notarized Affidavit of Use along with the trademark application in the Form TM-A. On the contrary, if the applicant files the application without any prior usage, meaning that the applicant has not yet started using the brand name but intends to do so in near future then the Affidavit of Use is not required to be submitted. In this case, the application will be filed on “proposed to be used” basis.
Affidavit of Use- What is required from the Applicant?
- Name and Registered Address of the Applicant
- Representation of Trademark, Class, and Type of Goods/Services
- Declaration of First Use
- Verification Page
- Signature of the Deponent
- Notarization.
Can Delay in submitting an Affidavit of Use be an exception?
There are instances were protecting or claiming prior usage of a trademark is urgent, and submitting an affidavit with all supporting documents at the time of filing the application is not practical. In such cases, the applicant can submit the Affidavit of Use after filing the application using Form TM-M under the heading ‘REQUEST FOR PAYMENT OF MISC. FEE FOR OTHER PURPOSE’. However, it is essential to ensure that the affidavit is submitted before the examination process to avoid any objections or delays.
Can a Foreign Applicant Claim Prior Usage in India?
The process of filing an application and claiming prior usage for a foreign applicant is governed by the statutory provisions of the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, in India. A foreign applicant can indeed claim prior usage in India. The criteria and process is same for the Foreign Applicant as well. The Applicant needs to submit a notarized and executed affidavit of use affixed on a stamp paper, along with supporting documents demonstrating the usage of the mark within the jurisdiction of India. However, it is necessary to provide proper documentation evidencing continuous use to avoid rejection of the application by the Indian Trade Marks Registry.
Commonly Raised Objections if the Affidavit of Use is not proper :
During the examination process, the examiner may raise objections related to the ineffectiveness and deficiencies in the Affidavit of Use filed by the applicant. Such deficiencies often lead to delays in the registration process of the trademark application. Consequently, the inadequacies in the Affidavit of Use may result in the issuance of an Office Action by the examiner. The applicant is then required to respond within one month by submitting a new notarized affidavit and explanations for the noted deficiencies. Some of the commonly raised objections concerning the Affidavit of Use by the examiner are:
- Incorrect Date of Use
- Lack of Continuous Use Evidence
Absence of Notarisation
- Incomplete or Inaccurate Evidence
- Insufficient Documentation
Consequences of Making a False Statement in an Affidavit in India?
An affidavit is a legally binding document in which an individual, under oath, affirms that the statements or facts made are true and correct. Making a false statement in an affidavit could lead to the person making the statement being found guilty of perjury and may be sentenced up to seven years of imprisonment and a fine of ten thousand rupees under Sections 227, 228, and 229 of the Bharatiya Nyaya Sanhita, 2023.
In the case of Chandra Shekhar Kargeti vs. State of Uttarakhand and Another (C-482) No. 576 of 2017, the honourable High Court of Uttarakhand ruled that a person who swears to a false affidavit is guilty of perjury, as defined under Section 193 of the Indian Penal Code (now Section 229 of the Bharatiya Nyaya Sanhita, 2023). The court further stated that an individual who is legally bound by law to provide truthful and correct information in an affidavit, submits a false statement to the court is prima facie found to have committed an offense of giving false evidence under Section 191 IPC (now Section 227 of the Bharatiya Nyaya Sanhita, 2023), which is punishable under Section 193 IPC. Therefore, it is important to ensure that all statements and facts in an affidavit are accurate and truthful to the best of the person’s knowledge.
Conclusion
Filing a trademark application with a claim of prior use is important to assert priority and protect statutory rights in the trademark. However, this claim must be substantiated by filing a correct Affidavit of Use or Statement of Use. Submitting an affidavit not only supports the authenticity of the prior use but also strengthens the applicant’s position in securing trademark protection during the opposition proceedings. A well-drafted affidavit, accompanied by cogent documentary evidence, ensures that the claim of priority is recognized and upheld by the Indian Trade Marks Registry. Thus, meticulous attention to the details in drafting and filing the affidavit is crucial for claiming prior use of the mark and avoiding potential objections during the examination process.
