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.
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.