Evidence of Use - Trademark Registration

Trademark examiners are assigned by the Trademark Registrar for verification of trademark applications. Trademark examiners check trademark applications and raise an objection if there are contraventions of the Trademark Act or Rules. Typically trademark objections are raised under “absolute grounds for refusal” or “relative grounds for refusal”. If the trademark applicant is an honest user of the mark and the mark has acquired distinctiveness, the applicant can respond to the trademark objection by submitting evidence of use. In this article, we look at evidence of use that can be submitted in response to a trademark objection.

Market Share

Market share data can be submitted as an evidence of use by large businesses, where a request for trademark registration is claimed based on recognition of a trademark as a well-known mark. If the trademark application is a small business, then the question of market share would be irrelevant and market share data cannot be used to support the trademark application.

Advertising Expenditure

Expenditure on advertisement can be submitted as evidence of use for a period of 3 years or more prior to the date of filing of the application. Advertising expenditure evidence should be broken-down and submitted under different categories like television, radio, newspapers, trade magazines, etc. The amount of advertising spend and the geography where the advertisement was made (nationwide vs local areas) will be important elements considered by the Registrar. For example, if the trademark application is for a consumer goods, then the Trademark Examiner will expect a large advertising spend comparable to the sales/advertising ratio of other businesses in the industry.

Sales Turnover

Sales turnover figures can be submitted as evidence of use of a trademark. Sales turnover should normally be given for the sales of goods/services under the mark for a period of about five years before the date of application. If the period of use is shorter, the turn over for the period should be considerable to support the trademark application. The greater the turnover, the more likely it is for the mark to be accepted. Turnover, advertising and period of use are considered together - turnover and/or advertising could compensate for a short period of use. In some industries, turnover figures may not be the appropriate scale for judging the business. For example, sales turnover numbers would be irrelevant for Whatsapp. In such cases, other metrics like subscribers, the number of account holders or investors and, if appropriate, the number and geographical spread of branches, could be used to demonstrate the extent of the use.

Brochures, Price Lists and Invoices

Brochures, catalogues, price lists, invoices and advertisements can be used to support the trademark application and show how the mark has been used and in relation to which goods/services. All exhibits submitted must be dated prior to the date of application.

Domain Names & Websites

Domain names can be registered as a trademark. Further domain names and websites can also be used to validate evidence of use. To submit domain or website as an evidence of use, the evidence submitted should show that the relevant goods/services have been offered for sale under the domain name. Hence, prominent use of the domain name on web pages offering goods or services for sale may constitute trade mark use.

Trade Evidence

Evidence of use can also be submitted in the form of others or experts in the trade attesting to the distinctive character of the trade mark. Such evidence or statements can be from chambers of commerce or other trade and professional associations, or from consumers.

Customer Surveys

Customer surveys can be submitted as evidence of use. However, care needs to be taken by the surveyor that the timing of the survey, selection of sample and questions posed in the survey are according to the trademark rules. For example, questions must not be leading like "is the sign regarded as the applicant’s trade mark". Questions must be open and general such as "What, if anything, does this picture signify to you?”.