In trademark prosecution, the threat of infringement of the mark
and a potential need to obtain an injunction usually are not at the
forefront of the applicant's mind. In India, how¬ever, use
claims contained in (or omitted from) the application can have a
significant effect on the outcome of a later dispute. It is
important that both the applicant and its counsel give sufficient
consideration to submitting use information to the Indian Trademark
Office, in order to better position the trademark owner to initiate
and defend challenges.
Types of Affidavits of Use
There are three types of Affidavits of Use that may be filed in
India: Affidavit of Prior Use (sup¬porting use of the mark that
has begun before the application is filed); Affidavit of Bona Fide
Intention to Use (supporting the intent, before the
application is filed, to use the mark after filing); and
Affidavit of Commencement of Use (supporting use of the mark that
began after the application was filed).
When to File Affidavit of Commencement of
Use
At the time of filing an application in India, an applicant must
indicate whether the mark is in use. If use had not begun at the
time of filing, an applicant may indicate that use has begun by
filing an Affidavit of Commencement of Use. An Affidavit of
Commencement of Use can be filed at any time during prosecution of
the application (which typically takes between one and two
years).
Benefits of Filing Affidavit of Commencement of Use
Whether to file an Affidavit of Commencement of Use voluntarily
is usually a decision left to the applicant. Although the Trademark
Office has the right to require an applicant to file an Affidavit
of Commencement of Use, it rarely does so. However, the filing of
the Affidavit can be helpful to the applicant in a number of
ways.
Defending against cancellation actions. The Affidavit can be
helpful in defending against a post-registration cancellation
action ("rectification") at the Trademark Office. Under
Section 47(1)(a) of The Trade Marks Act, 1999, a petitioner can
file a cancellation action on the grounds that (1) the registrant
did not have a bona fide intent to use the mark and (2) the
registrant has not, in fact, used the mark in relation to the goods
and/or services covered.
In American Home Products Corporation v. Mac Laboratories
(AIR 1986 SC 137), Mac Laboratories had filed for the cancellation
of American Home Products' trademark TRISTAN. The Supreme Court
held that for a mark to be cancelled under Section 47(1)(a) both
grounds of that section must be satisfied.
Thus, a registration is not vulnerable to a "lack of a bona
fide intent to use the mark" challenge if the mark is
eventually used. It is important to note that such use can
begin after registration, as long as it commences at least one
month before the cancellation action is brought.
Naturally, the fact that an applicant filed an Affidavit of
Commencement of Use makes the applicant's use of its mark more
apparent, and may dissuade third parties from filing a
cancel¬lation action based on lack of intent to use.
Establishing priority. It is important to remem¬ber that India
is a first-to-use jurisdiction. As such, the date of first use can
be more important in trademark disputes than the application filing
date. An alleged infringer can seek to rely on its own prior use as
a defense. If the plaintiff has an Affidavit of Use on file, there
is a public record of when the plaintiff's use began, which can
be cited as corroborative evidence in any subsequent legal
proceedings, such as a lawsuit. Merely having an earlier filing
date would not automatically make the plaintiff's mark a prior
mark in enforcement proceedings or in opposition/rectification
pro¬ceedings; instead, an Affidavit of Commence¬ment of Use
might be needed, to help provide support for this position.
An Affidavit of Commencement of Use can gar¬ner more support
from the court in a lawsuit. In Anand Kumar v. Haldiram Bhujia
Wala (80 (1999) DLT 26), during the prosecution of its
application, the defendant filed an Affidavit of Use supporting the
application, claiming use of the mark only within the state of West
Bengal. This persuaded the Delhi High Court to exclude the state of
West Bengal from the purview of the injunction order against the
defendant. The Affidavit of Use was sufficient to persuade the
court that the defendant's rights were superior in that
geographic area.
Although it is possible to raise a prior use de¬fense even in
the absence of such an Affidavit, the onus of proof is more
burdensome. To make up for the absence of a contemporane¬ously
filed Affidavit of Use or subsequently filed Affidavit of
Commencement of Use, evidence would have to be filed before the
court, which would likely cost more than filing an Affidavit during
prosecution.
Although an applicant could file an Affidavit of Commencement of
Use just before seeking an injunction, the court likely will give
more cre¬dence to an Affidavit filed in the normal course,
before the injunction proceedings became imminent, than one
prepared and filed on the eve of commencement of legal proceedings.
Thus it is useful to put on record the date of commencement of use
by filing an Affidavit in the Trademark Office as early as
possible.
Third, filing the Affidavit will put the applicant in a better
position to defend a non-use chal¬lenge. India gives
registrants a five-year grace period in which non-use is permitted
without others' having the ability to bring a cancella¬tion
action based on non-use. Nevertheless, an alleged infringer can
defend itself from an infringement or passing off claim by alleging
and establishing non-use by the registrant, even within the
five-year grace period. If an Affidavit of Commencement of Use is
already on record with the Trademark Office, others may be deterred
from bringing a cancellation action or defending an infringement
action on grounds of non-use.
How to File Affidavit of Commencement of Use
The Affidavit of Commencement of Use must include the date of
first use in India (month and year are sufficient). Even if use has
not commenced for all of the goods and/or services filed for in the
application, an Affidavit af¬firming commencement of use of
only some of the goods/services claimed in an application can be
useful. Specifically, upon registration of the mark, the Affidavit
can be effective for all "allied and cognate" (i.e.,
related) goods/services. In determining whether goods/services are
"allied and cognate," the court considers factors such as
consumer sophistication, channels of trade, methods of sale and the
nature of the goods/services themselves. For example, for an
application covering tea and spices under Class 33, if the
applicant used the mark in connection with tea in May 2008, the
applicant may file an Affidavit of Com¬mencement of Use for
tea, omitting spices. The applicant could enforce the resulting
registration against spices as well as tea because tea and spices
would be considered "allied and cognate" goods.
The original Affidavit, signed on stamp paper (official government
paper used in legal docu¬mentation, which can be provided by
one's Indian counsel) and notarized, is filed with the
Trademark Office. Other than the cost of the stamp paper, there is
no official fee charged by the Indian Trademark Office for the
filing of Affidavits of Use.
Final Thoughts
Even though filing an Affidavit of Commence¬ment of Use is recommended, current Trademark Office practice in India suggests it is not fatal to an applicant's position if the applicant does not voluntarily file the Affidavit. However, as discussed above, having evidence of use already on file can be very helpful if it is neces¬sary to take quick action to stop an infringer or defend against a third-party challenge.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.