Introduction
Evidence is required for supporting up all the claims made by applicants and opponents throughout the trademark process. The submission of proper evidence at different stages of trademark prosecution is vital for the effective registration of a trademark. Evidence can be submitted at various stages of the prosecution process, such as when responding to the examination report, filing Evidence in Support of Application or Opposition and when formally requested by the hearing officer during a trademark hearing as documents in support of a Show Cause Hearing.
Requirement of Evidences before Registrar
During prosecution, while a trademark is being examined, it is required to provide evidence of usage, especially if there is a competing mark on the Trademark Registry's records.
A notarized affidavit verifying the trademark's prior use in commerce is a legally binding declaration in a court of law. The submission of documentary evidence, such as sales receipts, certificates of registration, advertisements, and social media, proves that the trademark has been actively utilized in commerce. As a result, supplying documentation serves as proof of the trademark's earlier use and acquired distinctiveness. Evidence also plays an important role in countering opposition and cancellation proceedings. When a trademark is opposed or a cancellation proceeding has been filed, documentary evidence can counter claims that the mark is descriptive or not in use, demonstrating a market presence through sales data and advertising expenditures.
Section 129 of the Trademarks Act, 1999
In any proceeding under this Act before the Registrar, evidence shall be given by affidavit: Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit.
Is it mandatory to file Evidence by way of Affidavit?
An affidavit is a legal declaration issued under oath that confirms the reliability and accuracy of the evidence submitted. It certifies the credibility and validity of the information provided by the applicant, opponent, or registered proprietor. Providing an affidavit in support of the evidence ensures conviction to the evidence and eliminates the chance of falsification.
In the case Kamdhenu Limited vs. Registrar of Trademarks [C. A. (Comm. IPD – TM) 66/2021], the Appellant has filed a well-known trademark application along with supporting documents and evidence for the well-known status of the mark "KAMDHENU" before the Registrar. The Registrar rejected the application for the well-known trademark due to the filing of evidence without an affidavit. The Appellant filed an appeal against the order of the Registrar by submitting that the Registrar rejected the trademark application merely for not filing evidence along with the affidavit. The Appellant submitted that it is not mandatory to file evidence by way of affidavit as per Rule 124 of the Trademark Rules, 2017. The Appellant referred Section 129 of the Act, which states that the evidence shall be filed by way of affidavit, but the Registrar has the discretionary power to accept oral evidence instead of or in addition to evidence along with the affidavit. The Delhi High Court observed that the Registrar has outrageously rejected the application for not submitting documents without an affidavit. The Court allowed the Appellant to file evidence along with an affidavit before the Registrar within a period of eight weeks and asked the Registrar to schedule a hearing and decide the status of the application on the merit of law.
Conclusion
If evidence has been permitted to be filed without the support of an affidavit, the individual filing the documents and the person acting on the documents will be held accountable, because if it is discovered that the documents filed were falsified and not what they alleged to be, the applicant, registered proprietor, or opponent can dismiss responsibility for the insufficient documents. If the Applicant or Opponent has substantial evidence to challenge objection to the trademark, various unfavorable outcomes can undermine the legal position and render your brand insecure. Documentary evidence is critical in trademark prosecution for proving use, establishing distinctiveness, defending against challenges, and protecting and enforcing trademark rights.
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