User Affidavits in Trademarks – A Correction in Trademark Procedure

User Affidavits in Trademarks – A Correction in Trademark Procedure

This piece has been authored by Aadithya J Nair and Joshua Joseph Jose are law students at the National University of Advanced Legal Studies, Kochi

Key Words– Trademark, User Date, Affidavit, Registration, Bonafide

One of the predominant reasons lawyers are contracted is to aid with procedural compliance. This expertise is crucial in seeking a remedy from the courts. Intellectual property, especially in trademarks, has detailed procedural requirements that must be maintained if the remedy is to be obtained. However, this piece points out an instance where the procedure is inadequate concerning the amendment of an affidavit to be sent to the Trademark Registry. It argues that such a procedure must be put in place as errors are bound to occur in the trademark registration process and that there must be a legal recourse to correct such inadvertent errors.

In light of the argument above, Part II of this article raises an issue arising from a lack of framework available in the Trademark Rules, 2017 (‘the Rules’) to amend an affidavit in a trademark application. Part III then explains the necessity of having such a framework. Part IV lays down the consequences of the inability to correct an improper affidavit while offering a solution to the broader issue, and Part V offers a few concluding thoughts.

II. Pothole on the Road to Trademark Registration

A void in the trademark procedure laid down in the Rules is intended to be explored. A procedural lacuna presents itself when a trademark applicant realises the date of prior use (‘user date’) submitted in their trademark application is incorrect. This is not to say that there is no procedure to correct the user date detailed in the trademark registration application (‘TM-A’), as a procedure exists to amend it via Rule 37 of the Rules, which permits correction and amendment to the TM-A. However, there are no means provided to correct the information in the affidavit attached to the trademark application as mandated by Rule 25 of the Rules, which states that if prior use is claimed to the date of application, “the applicant shall file an affidavit testifying to such use along with supporting documents.”

Picture a scenario where a TM-A is filed, and the user date of the trademark is filed as 13.01.2024. This TM-A, by extension, requires an affidavit to be attached affirming the user date claimed to the trademark registrar, who functions as a tribunal. However, after the application, one understands that the user date claimed is incorrect and that the mark had been used a year before 13.01.2024. This factual inaccuracy results in a need to correct the mistake to secure more robust protection for the mark applied. This correction can be made by requesting miscellaneous functions concerning a trademark rectification through a TM-M form.

However, this filling of the TM-M form still does not change the fact that an affidavit mandatorily attached to the TM-A affirming that 13.01.2024 is the user date instead of 13.01.2023 is submitted to a quasi-judicial authority as evidence. Therefore, the contents of this affidavit remain unchanged despite the user date being altered in the TM-A via the TM-M. The legislative intent of the rules perhaps indicates that such an act should be permissible, as Rule 37 of the Rules allows for an amendment to the TM-A. This amendment, by extension, would suggest that an amendment to the affidavit submitted along with the application should be amendable due to the affidavit being a part of the trademark application. The affidavit is said to be a part of the application of the ‘FORM TM-A’ under the second schedule of the Rules, which states, “In case the use of the Trade Mark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.” However, the procedure for going about this amendment is unknown as it is not laid down in the Rules. Perhaps attaching another affidavit with the correct date while filing the TM-M form can be attempted to correct the false affidavit.

Nevertheless, it must be noted that no provision to attach an affidavit is present in the TM-M form, as in the TM-A form. Thus, there is a lack of a mechanism in the existing procedure to amend an affidavit for the user date mentioned. Such a lack of remedy is shocking, considering how often mistakes occur. Often, clients may supply wrong information, or advocates may file improper dates. Frequently, less-organised ventures may find an older date for the existence of a trademark at a later stage. In all these instances, there is no recourse for affidavit amendment, which results in a contradiction between the documents submitted.

III. Affidavit Correction- Relevance 

To better understand why there is a need for a clear and distinct provision for the amendment of user affidavit, it is pertinent to recognise the importance of affidavit in legal procedure and, hence, the consequence of carrying a user affidavit that is fatally wrong on critical factual details. An affidavit is essentially a written declaration based on facts made under oath voluntarily by a person signing it. Hence, the person who signs the affidavit solemnly chooses to ascertain a particular fact and gives his undertaking for the same in the eyes of the law.

Regarding trademark law, a user affidavit is particularly vital. This importance is stressed in Rule 25 of the Rules, which demands that an affidavit be provided to serve as the foundation of evidence used to prove prior use. Establishing previous use is crucial as it is an exception outlined in Section 34 of the Trademarks Act, 1999 (‘the Act’) to Section 28, which grants the registered proprietor the exclusive right to use the trademark. Also, Section 12 of the Trademark Act 1999 provides for registration based on honest concurrent use[A5] [h6] [h7] . Additionally, ascertainment of the exact user date of a trademark is pertinent not only for assessing the credibility of the proprietor but also for the procedure post the trademark advertisement, where other proprietors have been put on notice to challenge its validity. Hence, the importance of exact information being furnished in the user affidavit during the period allotted for opposition to the trademark and the subsequent hearing process is paramount.

IV. Defective Affidavits – Consequences, Effects and Solution

The Supreme Court in Jai Jai Ram Manohar Lal vs National Building Material Supply held that in the case of pleadings, a party should not be allowed to suffer due to negligence in the rules of procedure. Hence, a party should be permitted to amend pleadings in case of a mere mistake committed without malice and no harm caused to another party. This rationale also needs to be applied in trademark procedure as until the trademark is advertised, the period of opposing the trademark hasn’t commenced, and the application still rests with the Registrar. Therefore, allowing the amendment of the user affidavit during this period until the Registrar approves the application for advertisement is a valid claim. Since this amendment causes no harm, the proprietor is also saved from perjuring himself in the long term.

The consequence of going ahead with no means to amend the user affidavit results in hesitancy in setting the record straight, leading to various lapses in trademark protection. It also possibly attracts the offence of perjury in Section 234 of the Bharatiya Nyaya Sanhita and jeopardises the client’s interests.

The Delhi High Court in JB Kansal vs Waryam Singh stated that not allowing a person to amend an affidavit when the defect was due to lack of proper verification is injustice caused to the person who had no malice and is supposed to receive protection under the legislation. In this case, it was observed that the purpose of the Act and law in general in India is to enable legislation that allows for registration and protection of bona fide trademarks, and the same could be significantly hindered if user affidavits are not allowed to be amended. If the incorrect affidavit is not found out, then it could still be disadvantageous to the client in case the actual use was older than what was mentioned in the user affidavit, and hence, the client could be permanently estopped from going back on their original legal undertaking due to lack of procedure. Other than this, for obvious reasons, as mentioned before, the wrong user date would prejudice the rights of other proprietors once the said trademark is advertised, confusing and grossly misleading them as well as a quasi-judicial authority.

Thus, a precise provision must be encapsulated into the Trademark Rules that allows for [A8] amendment to user affidavit in case of lack of proper verification as long as it is before advertisement of the same so that not only are bona fide errors corrected but also no prejudice is caused to the other proprietors. An easy way to remedy the situation would be to provide the means to upload an affidavit with the correct details, which would effectively amend the previously filed affidavit. The means can be placed under the banner “For correction of a clerical error or  amendment under rule 37” in Part B of the TM-M form.

V. Conclusion

Law should be the facilitator and not the impediment to a productive society and, hence, should seek to fulfil and enforce individual rights. Procedures created by the law are meant to standardise the protection of rights and should not stand in the way of legal acknowledgment of creative work, especially in intellectual property law. Hence, this blog necessitates the immediate amendment of Trademark rules to clarify the procedure for the amendment of the user affidavit to ease the process of applying for trademark registration and make it proprietor-friendly.

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