• Dr. Mohan Dewan

Evidence is required to be filed before the Registrar of Trademarks at several instances during the prosecution of a trademark application. If an applicant claims use of a trademark at the time of filing of an application, the trademark rules require that the applicant submits a declaration which affirms the first date of use of the mark in DD/MM/YY format. To support this declaration, the applicant is required to file evidence, showing the exact goods/services for which the mark is being used and the claimed date of use. During prosecution, when a mark is under examination, evidence of use is sometimes asked for, particularly if there is a conflicting mark on the records of the Trademarks Registry. Even to overcome the objection under Section 9 of the Act, the applicant needs to prove the acquired distinctiveness/secondary meaning of the trade mark applied for and the same can be done by the filing of evidence of extensive use of the trade mark.  This evidence is also required to be submitted by means of an affidavit and documents, supporting the use of the mark by the applicant. Still further, during opposition proceedings, the applicant/Opponent is required to submit evidence at the evidence stage of the opposition and hereto the evidence is filed under cover of an affidavit along with documents. Not even in the examination or opposition process, even in the process of Assignment of trademarks it is necessary to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute.
An affidavit in support of the documents is a “legal declaration made under oath, confirming the authenticity and veracity of the evidence provided”. It serves as a statement of truth and adds credibility to the supporting documents filed by the Applicant/Opponent/registered proprietor. Further, it ensures the accuracy and reliability of the information presented.

The Trade Marks Act 1999, specifically states in Sec 129 as follows:

In any proceeding under this Act (the Trade Marks Act, 1999), before the Registrar, evidence shall be given by affidavit. Of course, there is a proviso that the Registrar may, if he thinks fit, take oral evidence in lieu of or in addition to such evidence by affidavit.

There is therefore no option for the applicant or the registered proprietor or the opponent but to file evidence by way of an affidavit and the affidavit may be supported by documents. This section protects, not only the Registrar of Trademarks but also practising Trademark Lawyers and Agents because it has sometimes been found that the documents submitted before the Registrar are not what they purport to be!

If evidence will be allowed to be filed without the support of an affidavit, clearly the person filing the documents and the person acting upon the documents will be held responsible, because if it is found that the documents filed were fabricated and not what they purported to be, there is a possibility that the applicant or the registered proprietor or the opponent may deny the responsibility of the inappropriate documents.

With this background, I am a little concerned with the finding of the learned Judge in the case of Kamdhenu V/S The Registrar of Trademarks (C.A.COM. IPD-TM)66/2021. The short facts of this matter are, an applicant filed an application for registration of the trademark “Kamdhenu” as a well-known trademark. Along with the application, it appears that the applicant filed documents to show that the mark was in use, but failed and when asked, refused to file an affidavit in support of the application. It would have been a simple matter for the applicant to file an affidavit and attach the documents in support thereof. Probably, if the affidavit had been filed in the first place, the mark would have proceeded to have been determined as well-known by the Registrar. However, the applicant was adamant and the Registrar, in my opinion, rightly refused the application. However, what concerns me is the Honorable Judge deciding the case, even when confronted by Sec 129, which mandated the filing of evidence only by way of an affidavit, went on to observe that oral evidence can also be taken into consideration. Para 23 of the said judgement is reproduced as below:

Rule 124 of the 2017 Rules uses the word “evidence and documents”. The same could also include affidavits by way of evidence and other documents. However, it cannot be held that an affidavit would be mandatory, so long as there is sufficient evidence. A perusal of the word ‘evidence’ in the Act and 2017 Rules would show that evidence under Section 129 of the 1999 Act is to be given by affidavit. However, oral evidence can also be taken into consideration. Section 129 of the 1999 Act cannot be read to mean that evidence only means ‘oral evidence’ or ‘evidence by way of an affidavit’ as defined in Section 3 of the Evidence Act. The said provision is as follows:

Evidence”. ––“Evidence” means and includes –– (1) all statements which the Court permits or requires to be made before it by witnesses, in relation to matters of fact under inquiry; such statements are called oral evidence; (2) all documents including electronic records produced for the inspection of the Court; such documents are called documentary evidence.”

Thus, as per Section 3 of the Evidence Act, ‘evidence’ would include both oral evidence and documentary evidence.

The Section itself states that taking oral evidence is at the discretion of the Registrar and this may be done in lieu of an affidavit or in addition to an affidavit. As per the order of the Registrar in the said matter, the applicant had not applied or requested the Registrar that the applicant would like to lead oral evidence in lieu of an affidavit.

In my opinion, being a special Act, Sec 129 of the Trade Marks Act will prevail over the general provisions of the Evidence Act and I am concerned that documents without an affidavit could be considered as sufficient evidence to establish a trademark as a well-known trademark. This same principle can be extended to any of the other requirements under the Trademark practice, where evidence is required to be submitted.

Again, in my opinion and in all humility I do not believe that when there is a clear mandatory requirement that says that “evidence shall be given by affidavit”, any Court can interpret this by saying that filing of an affidavit is not mandatory and only filing of documents are sufficient. Referring to the public notice, it speaks of ‘evidence’ in support of the applicant’s rights and claims. The term ‘evidence’ used in the public notice can only mean only ‘evidence’ as defined under Sec 129 of the Trade Marks Act. It is true that the Registrar, could if the Registrar thought it fit, take oral evidence, but in my understanding, oral evidence means examination-in-chief (and cross-examination if someone opposes the application) and an authorized person of the applicant would have to be produced before the Registrar for recording their oral evidence and the name of such person and request to the Registrar should be made in advance/along with application/within prescribed time for filing such evidence. An affidavit would have been an expedient solution. Even, the interpretation of Sec 129 reproduced in the order is incorrect. The section clearly says that “evidence before the Registrar shall be given by affidavit” and does not say that will be ‘normally’ given by affidavit. Does this mean that evidence of use required to be submitted for establishing use and evidence of use required at the time of opposition proceedings can be merely “documentary evidence” and no affidavit is required to be submitted, and the trademark examiner is bound to accept such documents unsupported by an affidavit as valid evidence?

Considering the above said aspects, the Union of India/CGPDTM should challenge and contest the said decision.


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