Affidavits not only evidence in trademark applications

In the recent case of Kamdhenu Ltd v The Registrar of Trade Marks, Delhi High Court heard an appeal by Kamdhenu Ltd, challenging the rejection of its application to designate the trademark Kamdhenu as a well-known trademark. The court clarified whether it was necessary to submit an affidavit as evidence and granted the appellant an opportunity to file an affidavit and any other documents in support of its claim.

Kamdhenu Ltd, the appellant, had applied to establish the well-known status of its trademark, Kamdhenu. The Registrar of Trade Marks rejected the application, citing the appellant’s failure to file an affidavit as evidence of the mark’s well-known status.

The appellant contended that rule 124 of the Trade Mark Rules, 2017 (rules) does not explicitly require evidence to be presented exclusively by affidavit. The appellant had submitted supporting documents such as judicial orders, contracts, invoices, and media material. It referred to relevant provisions of the Indian Evidence Act, 1872, and section 129 of the Trade Marks Act, 1999 (act), which permits the acceptance of documentary evidence in addition to or instead of evidence provided by affidavit.

The respondent, the Registrar of Trade Marks, referred to a public notice issued by the Office of the Controller General of Patents, Designs and Trademarks, suggesting that evidence to prove a well-known mark should be presented through an affidavit. The respondent argued that the absence of an affidavit rendered other evidence inadmissible.

The court analysed the relationship between section 11 of the act and rule 124 of the rules. Rule 124 aims to streamline procedure and establish uniformity in declaring well-known trademarks. The court found that rule 124 does not differentiate between a well-known mark declared by a court or determined by the registrar, and that the procedures for both are identical.

The court held that while an affidavit can be considered evidence, it is not obligatory in establishing the well-known status of a trademark. Documentary evidence showing contemporaneous and continuous use, reputation, and goodwill associated with the mark can suffice. The court gave as examples invoices showing the use of the mark in a large geographical area, promotion and advertising materials, participation in exhibitions and trade fairs, court decisions related to the trademark, consumer base information, e-commerce platform exposure, awards or recognition, and accounting documents.

The court found that rule 124 governing the determination of a well-known trademark by the registrar mentions the requirement of evidence and documents, which may include affidavits. However, the rule does not require an affidavit as long as sufficient evidence is presented.

In defining evidence in the context of trademarks, the court referred to section 129 of the act. Although the section provides that evidence is to be given by affidavit, it does not imply that evidence is limited to either oral testimony or affidavits, as set out in section 3 of the Evidence Act. Section 3 of the Evidence Act governs both oral and documentary evidence, including statements made before the court and documents, including electronic records.

Section 3 of the Evidence Act, deals with both oral and documentary evidence. This interpretation found that the determination of well-known status by the registrar would inherently involve the submission of documentary evidence. While affidavits may not be mandatory, they can support the case by providing additional details, such as the reasons for adopting a mark, the manner of coining a mark and the history of use. The court found that some facts may only be provided by an affidavit, while other documents may be publicly acknowledged and verifiable. There was no rigid rule requiring the submission of an affidavit. The public notice did not specifically mention such a requirement.

The court held that if the registrar deemed it necessary, an applicant could be allowed to file an affidavit to support specific documents. The absence of an affidavit should not cause the outright dismissal of the application.

This judgment provides clarity on the requirement of an affidavit as evidence for determining the well-known status of a trademark. It emphasises the acceptance of documentary evidence in place of an affidavit.