Registering a trademark involves navigating various procedures and submitting several documents to the Trademark Registry. Trademark applications can be filed under two primary categories: “Claiming User Date” and “Proposed to be Used.” The “Claiming User Date” category pertains to trademarks that are already in use by the applicant in the market, while the “Proposed to be Used” category applies to trademarks or service marks that are for future use. Each category demands specific documents based on the goods and services to process the application effectively.

A crucial document for applications filed under “Claiming User Date” is the trademark user affidavit. This affidavit is essential when the applicant asserts that the trademark has been used continuously in the market since a particular date. It is a formal declaration of prior use, establishing the applicant’s claim to the trademark. This blog delves into the essentials of trademark user affidavits, highlighting their significance, the information they must contain, and best practices for drafting them to ensure a successful registration process. Understanding the importance and proper execution of these affidavits can significantly enhance the likelihood of securing trademark registration.

Significance of User Affidavit

In India, trademark rights are fundamentally acquired based on the actual usage of the trademark in question. This makes the Trademark User Affidavit an indispensable document in the registration process. Serving as concrete evidence of prior use, the affidavit substantiates the applicant’s claim to the trademark, thereby reinforcing their rights over it. This is particularly crucial in scenarios of potential disputes where the priority of usage is contested. Furthermore, a well-documented user affidavit can significantly streamline and expedite the trademark registration process by providing clear and compelling evidence of the mark’s established presence in the market. Therefore, ensuring that a comprehensive and accurate user affidavit is part of the application can greatly enhance the likelihood of a smooth and successful registration.

To safeguard against false claims and hold the applicant accountable if a false claim of trademark usage from a particular date arises, the trademark laws require the declaration of the date of first use in the form of an affidavit. The affidavit must be included with a package of supporting documentation attesting to the applicant’s usage of trademarks in his offerings to clients for products and services.

Legal Provision for User Affidavit

Rule 25 of the Indian Trademarks Rules specifically addresses the statement of user in trademark applications. According to this rule, any application filed under the “Claiming User Date” category must include a detailed statement indicating the period during which the trademark has been used and the user’s identity concerning all the goods or services specified in the application. If the applicant claims prior use of the trademark before the application date, an affidavit testifying to such use, along with supporting documents, must be submitted. This Trademark User Affidavit is a legal declaration made by the trademark owner, affirming the proposed trademark’s continuous use before filing the registration application. The affidavit is crucial for establishing the applicant’s rights to the trademark based on significant prior usage. It must be prepared on a 100-rupee non-judicial stamp paper and include specific details such as the trademark class, the name and designation of the authorized signatory, the applicant’s name and address, the signatory’s nationality, the date from which the trademark has been in use, and the relevant goods and services. These requirements ensure that the affidavit provides comprehensive and verifiable evidence of the trademark’s usage, thereby supporting the registration process.

Essential Components of a Trademark User Affidavit

A comprehensive Trademark User Affidavit is essential for establishing the legitimacy and prior use of a trademark in India. This affidavit must include several critical components:

• The details of Applicant: This section should provide the name, address, nationality and other details of the applicant filing the affidavit.
• The details of the Trademark: It must contain a clear representation of the trademark, including any words, logos, or combinations thereof.
• Date of First Use: This is the date when the applicant first began using the trademark in connection with the specified goods or services.
• Goods or Services: A detailed description of the goods or services associated with the trademark and the classification under the Nice Classification system should be included.
• Territorial Use: The affidavit must specify the geographical areas within India where the trademark has been used.
• Sales and Promotional Activities: This section should summarise sales figures, promotional efforts, and advertisements related to the trademark. Supporting documents should be attached to substantiate these claims.
• Declaration: The affidavit must include a declaration affirming that the provided information is true and accurate and that the applicant is the rightful owner of the trademark.
• Signature and Date: The document must be signed by the applicant or their authorised representative, mentioning the signing date.
• Supporting Evidence and Documents: The affidavit is to be submitted along with a set of documents which prove or suggest the use of the trademark by the applicant in his goods and services to the customers. The supporting documents can be invoices or bills for the goods sold to the customer or advertisements made with respect to the goods in which the mark and nature of goods are evident. The set of documents is not expressly listed in the trademark rules, aiming not to make it exhaustive, which enables the applicants to come up with documents that suit the nature of their businesses. The person swearing the affidavit must be well-versed with the contents of the trademark application, class and nature of goods or services referred to in the trademark application.

The affidavit, printed on a 100-rupee non-judicial stamp paper, must be submitted along with supporting documents that demonstrate the trademark’s use in relation to the applicant’s goods and services. These documents are not explicitly listed in the Trade Marks Rules, allowing flexibility for applicants to provide evidence suited to their specific business context. The person swearing the affidavit should know the trademark application, including the class and nature of the goods or services involved.

The production of an affidavit by the applicant is mandatory to claim usage of the trademark prior to the application date. Failure to submit this affidavit, along with all required documents as stipulated by the Trademarks Registry, may result in the rejection of the application. The affidavit must clearly state the date and place of signing. Additionally, it is crucial that the person swearing the affidavit fully reads, understands, and duly signs it to ensure its validity and accuracy. This thorough approach helps to substantiate the claim of prior use and supports the overall integrity of the trademark registration process.

*Written by Helan Benny, legal intern @Intepat IP