Trademark is a unique expression of word, symbol, logo or device related to a product or service that distinguishes it from other products or services in the market. Your trademark registration gives you an exclusive right and no one else to use the trademark for their products or services, or in their marketing.
The User Affidavit of the Trademark Registration or also known as the Trademark Statement, must be attached with the trademark application in cases where a prior claim has been made. This means if a person wishes to apply for a mark, the priority will be given to him if he is the first one to claim. The person claiming a “prior date of usage” will have a strong base in his trademark application as compared to the other person. As per the Trademark Act 1999, the User affidavit is an essential part of the trademark application.
Date of First Use
The date of first use means that date when, the goods first came into the market (sold or transported) or the date when for the first time, services were rendered under the trademark. There can be cases when the mark was not put to use before. In those cases, the date of first use or “User date” can be “Proposed to be Used”. It is important to note that in that scenario, it is not necessary to attach the user affidavit. However, in cases when the user date is mentioned, it is necessary to attach the user affidavit.
The prior use has to be mentioned in the trademark application as it claims the priority of the mark. The applicant also has to provide the Date of use and the associated proof along with user affidavit.
What is User Affidavit?
When the user date is mentioned or claimed in the application, the applicant has to provide a proof for the same. The appropriate documents can be used as a proof which contain both the name of the mark and the date of use. This date will be the one from which the goods started coming into the market or services started to be rendered. The documents which can be included as a proof are as follows :
The user affidavit is a document that has to be attached with the trademark to claim the user date for registration of the trademark. The user affidavit refers the applicant as the “deponent” wherein the applicant claims the date and recognises that the facts disclosed regarding the trademark use are correct. The duly signed and stamped sand taken on oath before any court or before any officer empowered such to administer oaths or to take affidavits or before the Registrar or before the Notary Public which affidavit shall be submitted to the Registrar of Trademark while making application.
There are two rules mentioned regarding the User affidavit in the Trademark Rules, 2002. According to the same, the filing of user affidavit is left to the Trademark Registrar’s discretion even when the previous use was claimed in the application.
The rules are as follows:
“An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.”
This rule stated the mandate of attaching the user affidavit along with the trademark application if the user date is claimed. The applicant needs to submit the same which testifies usage of the mark.
“An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application. In case, the use of the trade mark is claimed prior to the date of application, the applicants shall file an affidavit testifying to such use along with supporting documents.”
According to this rule as stated in the Trademark Rules, 2017, certain rules pertaining to the user affidavit have changed. It states that all the applicants have to submit the user affidavit which claims the person by whom the mark was used and the period for which the mark was in circulation prior to the date of application.
Advantages of User Affidavit
- Helps to register the Trademarks which are descriptive in nature: The User affidavit helps in describing the trademarks so that they could be appreciated by the Registrar of the trademarks. The description gives more details about the trademark and the history of its use.
- Gives an upper-hand in case of objection or opposition: When the Trademark faces any objection or opposition, then the arguments must be supported by the documents which provide a thorough description about the trademark. This plays as an upper hand in facing the opposition or objection.
- A tool to prior user of unregistered trademark: The trademark can be put to use before it has got registered with the Trademark Registry of India. This can only be possible without any competition of infringement. The User Affidavit supports the prior use of the trademark.
Goodwill materials to be mentioned in user affidavit
- Recent literature (in the form of brochures, pamphlets, media publications etc.) evidencing the use of the subject mark with respect to the services for which it is used.
- Advertisements in newspapers and magazines; (IF ANY)
- Annual sales figures of services offered under the subject mark; (IF ANY)
- Invoices, order letters, bills etc., bearing the subject mark; (IF ANY)
- Annual promotional expenditure figures vis-à-vis the subject mark. (IF ANY)
- Registration of any other mark filed in the name of the Applicant; (IF ANY)
- Any other information/document which can be used to show the goodwill and reputation of the mark in the general public. (IF ANY)
Format for User Affidavit
The User affidavit must follow a particular format as determined by the rules of Trademark in India. The format with all the necessary information to be provided is as follows:
In support of the request made to apply for Trade Mark for the mark “MARK” under Trademark Class”00″.
(Claiming the details of the mark including the name and the Trademark Class)
I, Mr. [Details of Authorised Signatory], [Designation of Authorised Signatory] of [Name of the Applicant], having registered office at [Address of the Applicant], do hereby solemnly affirm and declare as follows:
- That I am an Indian by nationality and residing at [Residing Address of the Applicant].
- That our firm is engaged in business of [Goods and Services offered by the firm] included in the [Class of Trademark], which are provided under the said Trademark [Trademark Name].
- The said Trademark [Trademark Name] was conceived and adopted by our firm and has been continuously used since [Date of Use] in connection with the said business and by reason of such use, the said business bearing the Trademark [Trademark Name] have come to be understood as being business being provided by our firm.
- The said mark is prominently displayed on each of our firm’s business and the same has been seen and/or known to considerable people in the Industry/market in which our firm operates.
- That the readily available yearly sales figures of trademark since the year [Year or start of operation] is as under : (A table providing information of the sales for the respective fiscal years).
- That our firm has provided the aforesaid services continuously , extensively and exclusively on various E-commerce platforms under the trademark [Trademark Name] since the year [Year of start of operation] and the people at large associate the trade mark in respect of with our firm only.
- I state that I am familiar and well conversant with the facts and circumstances of the present matter and competent and authorized to swear this affidavit and make the necessary statement in respect thereof.
- That there is a good demand of the trademark [Trademark Name] with respect of the aforesaid services and the firm has also spent a considerable sum of money on the advertisements of goods or services under the subject trademark, since its first adoption and use.
- That the trademark [Trademark Name] has acquired a very valuable goodwill and reputation due to the sales and publicity and good quality of the Services.
- A trademark application is hereby made for registration of the accompanying trade mark in class [Trademark Class (number)] and the said mark has been continuously used since [Date of Use] in respect of the said [Details of goods and services]
- That the trademark [Trademark Name] above respect to aforementioned goods or services is solely and exclusively associated with the Applicant and none else and has become distinctive on account of long continuous and extensive use and is entitled to registration.
I solemnly state that the contents of this affidavit are true to the best of my knowledge and belief and that it conceals nothing and that no part of it is false.
[Signature of the applicant]
I above named deponent do hereby verify that the statements made by me on behalf of the applicant under Para 1 to 3 are true and correct to the best of my knowledge and belief & nothing is false and nothing is concealed in it.
[Signature of the applicant]