Use is a fundamental concept in trademark jurisprudence. Registration of a trademark is a voluntary act on the part of a trademark owner in the sense that, a trademark owner does not require his trademark to be registered to acquire ownership rights in a trademark. Registration only confirms the right of its owner under a national statute of a country. Primarily, ownership of a trademark is acquired by adoption and use in respect of or upon goods or in relation to services. Marks can, of course, be registered in some jurisdictions like India, even without proving the use of the mark in trade or commerce. Therefore, these marks are set to be registered on a ‘proposed to be used’ or ‘intent to use basis.’ But even in this case, the Courts and the Authorities have always held that although there is no actual use, the owner of the trademark or service mark must have a present and definite intention to use the mark himself/herself upon the goods or services for which an application for registration is made. In the absence of such a present and definite intention, even a registered trademark is liable to get cancelled.
In the Pussy Galore case, where a registered proprietor had merely registered the trademark not to use it itself but to license it to others for use, the registration mark was cancelled on the grounds that this amounted to trafficking of trademarks. In the Indian context at least, adoption and use of a trademark is superior to a priority date obtained by filing an application for the registration of the mark. Thus, even if a trademark is registered, if another person can genuinely establish that he/she has been using a trademark prior to the date of filing of the application for registration by the registered proprietor, even the registration of the trademark can be cancelled by the unregistered owner, if he/she can clearly show that the unregistered mark was used genuinely prior to the date of application of the registered proprietor. The Apex Court and a series of other High Courts in India have unequivocally stated that the first adopter and the user of trademark anywhere in the world is the true owner of the trademark, even though such a person may not have actually used a mark in India. This was the precise rationale in the ‘Mucosolvin’ case where the plaintiff obtained an injunction even though its product was not sold in India. This was only on the basis of proving prior adoption and use.
During the process of registration of a trademark, hitherto, it has been a common practice of applicants to make a request for amending the statement of use. These requests are generally made during the examination stage and sometimes during opposition, when either the examiner cites a prior application or a prior claimant files a notice of opposition to a mark that is already accepted for registration. Confronted with these type of objections, the strategy has been to make requests for amending the statement of use i) to a date prior to the priority date of the earlier applicant or registered proprietor or ii) to a date prior to the user date mentioned in the statement of use in the earlier application or registration. There have definitely been some genuine cases where at the time of making the application for registration, either erroneously or negligently, the applicant gave a wrong user date. But more often than not, such claims to prior use have been dubious and unsubstantiated. Occasionally, cases have also come to light, where the prior use was sought to be established on the basis of forged or fabricated documents.
After reviewing the provisions of the trademark law and taking into account the practical considerations prevailing in India, the Controller General of Trademarks in his order of July, 2014 ordered that under no circumstances can the statement of use be altered, once given in the application at the time of making the application; and requests for such alterations will not be entertained in the future. It is presumed that this will also apply to a large number of requests pending in applications for registration of trademarks at the various branches of the Trademark Registry. The Controller however has, in the same order suggested a way out for genuine cases where in the initial application a wrong date was provided in the statement of use. In such cases, the Registrar has suggested that a fresh application should be made designating a ‘newly discovered’ date. In view of this suggestion coming from the Controller himself, it is unlikely that the prior application with the wrong user date will pose as a hindrance to the registration of the mark with a new date in the statement of use.
The take home message is:
- Before making an application for registration, the applicant or its agent must carefully scrutinize all sales and publicity documents to elicit the correct date of use.
- In spite of a diligent check, if such a user date is not precisely available and if such a user date becomes available subsequently, the right course of action is to abandon the trademark bearing the wrong statement of use and file a fresh application mentioning the correct date.
- Although not stated in the Controller General’s order, it follows that not only must a user date be precise in the day/month/year format, a distinction should also be made in respect of the actual specification of goods for which the mark has been claimed to be used. Thus, if a trademark is only used for television sets and not for radios, the proper procedure would be to file two separate applications, one, for television sets in which the date of use is provided and another for radios on a proposed to be used basis.
- In such a mixed scenario, it is not advisable to file a multi-class application where the applicant has only been using the trademark for goods and services in some classes but not in others. In such cases it is always preferred to file separate applications depicting the actual state of affairs.