This article is written by team LegalWiz. The article discusses the significance of claiming user date in trademark registration process.
The trademark registration in India is based on prior to use and first to claim. That means the person, who applies for the brand name in the first place will be given priority for registration. Also, when two trademark applications are applied and compared, the person who can claim the prior date of usage may have strong base compared to other. Hence, the importance of the user date is inevitable in trademark registration and application. Let us understand here how the “User date” is important during the registration process and how one can claim the same.
What is User Date in Trademark Registration?
User Date is the date from which the trademark is being used in the commercial transactions whether with or without registration. As explained above, the prior user has more importance than a registered mark or application made. Therefore, to claim the priority over the brand name, the applicant must provide the user date and prove the same.
Under Indian Trade Marks Act, 1999, the online trademark application can be made on any of the two bases:
- Claiming User Date
- as proposed to be used
If the user date is claimed, the applicant shall provide the proof of usage on the said date. If the applicant fails to provide any proof for said date, he should claim the date for which the proof is available.
What proofs can support the prior use claim?
When the application claims a specific date, from which the applied trademark is being used, appropriate documents as proof of use shall accompany the application. The documents that contain the brand name and the date, which has public circulation or proves the commercial use of the brand name, can be adopted as proof for this purpose.
Following are the documents to be filed along with the application in order to claim the user date:
The user affidavit is must document to be attached to the application for online trademark registration in India. The applicant referred as the deponent in the affidavit declares that the date claimed and the facts disclosed with respect to the application and use of the brand name are correct. The affidavit shall be notarized after payment of stamp duty applicable. The user affidavit shall be provided along with any of the other proof explained below.
Invoices and Bills
The invoices issued to a consumer can be presented. Further, the bills received for any expense such as the purchase of raw material, for hiring services in relation to business, the bill for publication of brochure and banners, etc. can be presented. The invoices and bills prove the commercial use of the brand name. If the said invoices or bills are furnished, the applicant should provide at least two invoices for each year from the user date claimed.
Government Registration Certificates
The registration certificates issued by the Government of India or State or any other authority can be a support to an application as it validates the business or commercial transactions of the applicant.
Many of the businesses have their presence on the internet or the social media portals. Any registration obtained for domain or any certificate received can also be presented there. As many businesses work only through social media channels, the snap shot of the post or promotions can also be counted to support the claim.
Publication to the public at large
Any announcements, advertisement or declarations made to newspapers or any other modes having circulation to the public platform or having wide reach are also a valid proof to establish this claim. However, the publication should contain the published date and the brand name.
If the applicant is not able to furnish any of the above document as an attachment to an application, the application must be made as “proposed to be used”, which means the date of application will be deemed as the priority date.
What are the advantages of claiming User Date?
Distinctiveness to Mark
A descriptive mark cannot be registered, but an exception is there that when a descriptive trademark assumes a secondary meaning in the relevant market; the mark is registrable as assumes a distinctiveness and identity in the market. Thus, usage for a long time makes the mark distinctive and adds a support to an application.
Dealing with Objections and proceedings
The first usage is an effective ground to claim right over the protection. During objection raised or any third party opposition, the prior user will have an upper hand over the other. If the user date is not mentioned in the application itself, the applicant cannot claim the same during the proceedings also.
Provides an exclusive Right to Trademark
The Trade Marks Act restricts the registered proprietor in the interference of the user rights of a prior user. It is cleared through judgment that prior user can be the priority in registration as well as it prevents the third person from trademark registration or infringing the mark that is similar to the prior company or individual.
Prior usage and passing off
The passing off is considered as the right that protects the unregistered marks even against the registered marks. The Act says that the prior user can take an action for passing off against the other users, including registered user using similar trademarks or brand names. However, the prior user must prove the user date of the said brand name.
The claim of user date is necessary for the application stage itself, as the failure will not allow the applicant to get the benefit of the usage. The value and goodwill built during the years of usage may be required to be given to the organization that never used the brand name or started using in recent time, maybe a competitor also. Therefore, rather than giving up on the right and value created since years, the claim of user date shall be made by submission of user proof and the affidavit as prescribed. Further, it should be made sure that the proof of user date contains the date of publication of issue and the brand name.