Power of Proof: The Role of Documentary Evidence in Trademark Prosecution

Intellectual Property is often aligned with a set of intangible assets including invention & creation and when it comes to trademark prosecution it is highly crucial to substantiate your creation with appropriate supporting documents to make your case strong. Supporting evidence is important in any court of law because every allegation or demand in court has to be supported by some evidence otherwise it would be considered baseless. In the Indian jurisdiction, various forms of evidence are presented in court daily and the field of evidence law within our country is governed under the Indian Evidence Act, 1872. If we are to look into the statutory definition of Evidence, under section 3 of the Indian Evidence Act 1872 evidence means and includes,

1. All statements which the court allows or needs to be presented before it by the witnesses in connection to matters of fact under inquiry. These statements are termed as oral evidence.
2. All such documents including any electronic record, are presented before the court for inspection. These documents are termed documentary evidence.

The court in the case of Kamdhenu Ltd. v. The Registrar of Trade Marks, further highlights the importance of documentary evidence in establishing the well-known status of a trademark. It provides a list of possible documents that may be submitted as evidence, including invoices, promotion and advertising materials, records of successful enforcement, market surveys, and financial documents. Therefore, the significance of such documentary evidence in the entire duration of trademark prosecution is specifically addressed and explained in this article.

How Does Evidence Shape Trademark Prosecution?

• Submitting the appropriate evidence at different stages of trademark prosecution is critical for the successful registration of a trademark. It not only adds to the comprehensive establishment of a mark’s grounds for bonafide use but also adds to the strategic defence of a trademark at the time of oppositions and potential threats and challenges from third parties.
• Evidence can be submitted at multiple points during the prosecution process, such as when replying to the examination report, during the filing of Evidence in Support of Application or Opposition, and if specifically requested by the hearing officer during a trademark hearing as documents in support of a Show Cause Hearing.
• Establishing Prior Use: When submitting documentary evidence, such as sales receipts, advertisements, and shipping records, it demonstrates that the trademark has been actively used in commerce. This is essential for both registering a trademark and maintaining it. Therefore, submitting evidence is substantiating proof of prior use and acquired distinctiveness of the trademark. Further for trade dress or non-conventional trademarks, documentary evidence is essential to demonstrate that the features claimed are non-functional and serve as a source identifier.
• Oppositions and Cancellations proceedings: Evidence also plays a huge role in countering Oppositions and Cancellations proceedings,as when a trademark is opposed or a cancellation proceeding is initiated, documentary evidence can counter claims that the mark is descriptive, generic, or not in use, further showcasing a strong market presence through sales data, market share, and advertising expenditures which can help defend against claims of non-use or abandonment.
• Legal Compliance: In infringement lawsuits or when enforcing rights against counterfeiters, documentary evidence is pivotal in proving the trademark’s validity and the extent of its use. Documentation of licensing agreements, royalty payments, and quality control measures can demonstrate proper use and control over the trademark.
• Facilitating Madrid Protocols: When registering trademarks internationally, documentary evidence from the home country supports applications and helps overcome objections.
• Avoiding Abandonment: Continuous documentation prevents allegations of abandonment, which can arise if there is a significant period of non-use without a valid reason.

What are the Kinds of Evidence that can be Included?

Several supporting documents could be submitted as valid evidence for substantiating the continued and prior use of your trademark, from government documentation, license or even advertisements and online presence amongst the consumers and trade channels. A few examples are mentioned below:

• Proof of Use: Photographs of product packaging, labels, tags, or advertising materials displaying the trademark are crucial to showcase continuous usage of the trademark.
• Advertisements: Documentation of advertising efforts, including e-commerce platforms play a key role to show engagement and reputation amongst the consumers.
• Website Screenshots: Screenshots showing the trademark in use on websites.
• Invoices and Receipts: Proof of sales transactions involving the trademarked products or services.
• Licenses and Certification: Certifications accoladed to the brand are crucial to signify the existing goodwill and reputation aligned with the company.
• International Registrations: Records of the trademark’s registration in other countries are excellent supporting documents as it show-cases transborder reputation across the globe.
• Prior Use Affidavit: A notarized affidavit affirming the trademark’s prior use in commerce is a declaration having legal validity in the court of law.
• Awards and Accolades: All accolades received by the Applicant for the brand can be included as a crucial evidence as it showcases the goodwill attained by the brand amongst the market channels, consumers and trade sectors.

One notable example of successful trademark registration in our portfolio is that of MOPLAH’S, the esteemed Malabari Moplah cuisine restaurant located in South Bangalore. The distinctive trademark features a stylized geometric flower or star-like design, composed of interlocking shapes in red and blue, creating a symmetrical and visually appealing pattern. The elegance and distinctiveness of the design were further supported by substantial documentary evidence provided by the applicant. This evidence includes government documentation and licenses, advertisements and pamphlets, invoices and receipts that demonstrate the restaurant’s operational functionality, customer reviews and features, and the restaurant’s presence on food delivery apps and social media platforms. These comprehensive pieces of documentary evidence have significantly strengthened the client’s case, illustrating the critical role such evidence plays in securing a successful trademark registration. Another notable example is the case of The Bengaluru Café. Here, the supporting documents, such as excerpts from various social media platforms, evidence of the applicant’s presence on food delivery platforms, and other trademark registration certificates for the same trademark by the Applicant in different classes, have further strengthened the Applicant’s case.

Conclusion:

Countering opposition is crucial to protecting your trademark. The most effective way to do this is by supporting your contentions and arguments with the right kind of evidence. This will help you substantiate your claims and firmly hold your ground. In summary, by presenting comprehensive and well-documented proof, you can substantiate your claims, defend your rights, and ensure your trademark remains a valuable asset to your business. If you don’t have strong evidence when countering opposition to your trademark, several negative outcomes can weaken your legal position and make your trademark vulnerable. Documentary evidence in trademark prosecution plays a vital role in proving use, establishing distinctiveness, defending against challenges, and maintaining and enforcing trademark rights. It helps create a comprehensive and persuasive narrative about the trademark’s significance, use, and market presence.