Trademarks play a crucial role in the growth and sustenance of any business. Trademarks are extremely vulnerable to refusal by registrar and cancellation due to opposition from a third party. The registrar may refuse registration on any grounds under section 11 of the Trademarks Act, 1999. These are relative grounds for refusal and not absolute.
Trademarks become so closely associated with the goods or services that it would be detrimental to lose them either due to refusal of registration by the registrar or due to opposition from a third party. These two are common hurdles faced by proprietors during the registration process. However, there is no need to worry as far as one is able to prove the usage of the trademark with respect to goods or services and demonstrate how the trademark and the goods or services have become synonymous during the course of time.
No application for registration can be refused without giving the applicant an opportunity to present his case and provide evidence of usage of the trademark. They are entitled to this right. The applicant has to make the most of this opportunity. Now, the question is – “What documents constitute proof of usage of the trademark?”
When we talk about documents necessary to prove, there is no definite list provided in the Act, and it is at the discretion of the Registrar to accept or reject. The applicant must provide the list of goods or services which utilize the mark. The documents which can be submitted along with the application include the following –
1. Commercial invoices and bills;
2. Storage and packaging, and labeling of boxes displaying the trademark;
3. Brochures or advertisements, or pamphlets that prove the association of the mark with the product;
4. Supply contracts and shipping documents;
5. Licensing agreements for manufacture, if any;
6. Commercial rental agreements indicating the use of the mark with respect to goods and services;
7. Records relating to the payment of tax;
8. Visiting cards of the proprietor bearing the trademark;
9. Records relating to the sale of goods and services bearing the trademark;
10. Show cards or display boards;
11. Press publication or review reports of the products;
12. Photographs of the mark being displayed or advertised on vehicles (if any);
13. Any documentary proof of an event sponsored by the proprietor using the trademark;
14. Stationary or articles circulated by the proprietor using the trademark;
15. Details extracted from the official website and domain names;
16. Reports or data showing the market share of the goods or service;
17. Customer feedback on the goods and services.
Are these documents sufficient to prove the usage of the trademark?
The list of documents above is only illustrative and not exhaustive. The applicant can submit as many documents as possible to prove his case. Even certificates of appreciation and awards for the product and service can be given as supplementary evidence, as they do not necessarily denote the reputation of the brand.
These documents demonstrate the extent to which the trademark enjoys recognition among the public, from the administrative authorities to the public in general.
Things to be kept in mind while preparing documents to be submitted as proof
i) The documents must relate to the trademark in question
ii) The documents must be in a position to establish a link between the product and the mark
iii) The documents must prove beyond reasonable doubt that sufficient proof exists to grant the applicant registration.
iv) The documents should be authentic and not fabricated.
v) The documents must indicate the use of goods or services within a defined territory.
At Intepat, we help you sail through the entire complex trademark registration process, and our attorneys can ensure the successful grant of registration to your trademark. For further discussion, please contact us.