Trademark User Affidavit

The proprietors of a trademark must file form TM-A for registration of their trademarks in India. When the trademark owners are already using the trademarks proposed for registration in their business or selling goods attaching the trademark, they must attach an affidavit of such prior use. 

The affidavit of prior use of the trademark is known as trademark user affidavit or trademark statement of use. The trademark user affidavit must be attached to the trademark registration application when the proprietor makes a previous use claim. 

When the proprietor of a trademark makes a prior use claim, the priority will be given to him/her of such trademark usage and will have a strong base in his/her trademark registration compared to others. The Trade Mark Rules, 2017, makes the trademark user affidavit a mandatory attachment with the trademark registration application when there is a prior use claim. 

Trademark Statement of Use

Under the Trademark Rules, 2002, the user affidavit for a prior usage claim of the trademark was not mandatory. The Registrar of Trademark (‘Registrar’) had the discretion to ask for such an affidavit at the time of registration. 

However, the Trademark Rules, 2017 amended the rule on user affidavit. It stated that when the trademark is already in use, the application to register the trademark should contain a statement of the period of use and the persons using it relating to all the goods or services mentioned in the registration application. 

The Trademark Rules, 2017 states that when trademark owners claim prior usage of the trademark, they must mandatorily file an affidavit testifying such prior use along with supporting documents. 

Thus, all trademark registration applications in India require a trademark user affidavit if the applicant claims previous trademark use. If the applicant filing for trademark registration is an individual, he/she will be the deponent who needs to sign and verify the contents of the user affidavit. If the applicant filing the trademark registration is a company/LLP, the deponent will be the authorised signatory of the company/LLP.

The affidavit must be executed on a non-judicial stamp paper under oath before any notary public or an officer empowered to administer such oaths. The applicant must submit the user affidavit to the Registrar while filing the registration application.

Download the Sample of Trademark User Affidavit

Date of First Use of Trademark

The trademark owner/applicant of the trademark registration application must mention the date of first use of the trademark in the application. The date of first use relating to goods is the date when the goods were first sold or transported under the trademark, and the date of first use in respect of services is the date when the services under the trademark were first rendered. 

When the trademark for registration is not used yet, the applicant has to write the ‘Proposed to be used’ date in the application. When the ‘Proposed to be used’ date is mentioned, the user affidavit or trademark statement of use need not be attached. When the applicant claims a priority claim or prior trademark usage claim, the applicant must mention the date of first use in the ‘Priority claimed since’ row of the application. 

Contents of Trademark User Affidavit

• Trademark – The deponent must mention the trademark that is to be registered along with its description. 
• Details of the deponent – The user affidavit should mention the deponent’s name, address, designation (if the applicant is a company/LLP), and nationality. 
• Class of the mark – The user affidavit should mention the trademark class under which it is proposed to be registered by the applicant. 
• Good or services – The user affidavit should mention the goods or services for which the trademark is already being attached and used.
• Date of first use – The user affidavit should include the date of first use of the trademark by its proprietor. 

Documents to be Attached to User Affidavit

• Any recent literature, such as pamphlets, brochures, media publications, advertisements in newspapers or magazines, hoardings, etc., evidencing the trademark use concerning the goods or services for which it is used.
• Annual sales figures of the offered services under the trademark, if any. 
• Invoices, bills, order letters, etc., bearing the trademark if any. 
• Any other document or information that can be used to show the reputation and goodwill of the trademark to the general public, if any. 

Advantages of Trademark User Affidavit

The trademark user affidavit helps to register the trademarks that are descriptive in nature. It provides details about the trademark and the history of its usage. 

It helps when there is trademark objection or opposition. When the trademark faces any opposition or objection, the arguments should be supported by documents that provide a thorough description of the trademark. 

The user affidavit and the documents attached to the affidavit proves its prior usage. As the trademark user affidavit proves the prior user of the unregistered trademark, it helps to win an infringement case if third parties use the trademarks later. 

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.

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