Statement of Use (SOU) of Trademark is required for filing any trademark filed with the Office of Controller General of Patents, Design & Trade Marks (CGPDTM) which is a subordinate office of the Government of India and administers the Indian Law of Patents, Designs and Trade Marks. Commencement of usage of a trademark is not a requirement to receive protection of such a trademark. However, there does arise a necessity to prove that there is a bona fide intent to use the trademark that has been initiated for registration of trademark protection.
What is Statement of Use of Trademark?
‘Use’ is considered to be the foundational brick in intellectual property jurisprudence and the actual use or proposal to use becomes important to be proved in order to claim for such protection of the intellectual property. The CGPDTM is the body responsible for providing trademark protection to the users or intended users in India. Submission of trademark application commences the process of trademark protection and two ways are available with the applicant to qualify for such trademark registration. They are as follows:
+ Actual Use: This requirement is met when the applicant is in the position to prove that they are currently using the trademark they have applied to be registered in their business.
+ Proposed to Use: This requirement is met when the applicant has a trademark in mind for certain future use but has not been able to come through with its usage. In order for such a trademark to be processed the applicant has to prove his intent to use in his statement of use along with such trademark application.
When filing for a prior user-based trademark application, an affidavit is mandatorily required to be filed at the time of filing the trademark application which has been provided under Rule 25(2) of Trade Mark Rules, 2017. It mentions:
(1) 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 trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.
This affidavit is to represent the actual usage of the mark in India. Absence of a particular format for the affidavit and the nature of documents to be provided to prove such usage might prove as roadblock for filing trademark application. In light of that, a globally accepted pattern of filing for trademark application along with sales invoices/ purchase orders/ statement of accounts or any such evidence can be presented in a documented format which proves to be sufficient as to the usage of the trademark for such goods or services for each year of usage in India.
Importance of Statement of Use of Trademark.
Without filing for the Statement of Use of Trademark, the application of such registration cannot be finalized and approved. This would lead to the CGPDTM to not publish the trademark applied for registration in the official gazette. Failure of not following the procedure prescribed which includes the filing of Statement of Use will result in such trademark application to be not processed and approved which does not go in accordance to the applicant’s intentions to get such trademark registered with least hinderances and without wastage of his time which can prove to be valuable to him in accordance to his business plans.
The Pussy Galore case becomes an important precedent to showcase the importance of existence of such mandatory filing of Statement of Use, as in this particular case the registered proprietor got his trademarks registered in order to not use it for itself but to license it to others for use and in light of that the registered mark was cancelled on the grounds that it amounted to trafficking of trademarks.