Evidence Required to Determine Well Knownness of a Trademark – Part III
This post was first published on 3rd July, 2014.
As discussed in my previous post, the claimant of well knownness of a trademark is required to prove the popularity of the mark among relevant public by submitting cogent, clear and convincing documentary proof. In this post, we will be discussing the list of documents that the courts or the Trademark Office considers as valid proof for determining the well knownness of a trademark.
Although a hard and fast rule cannot be drawn with respect to the acceptable evidences before a court of law, the following list is drawn from interpretation of various judgements and practices of the Trademark Office:
a) Certified Copies of Trademark Registration Certificates: Although trademark registration in India is not a requisite factor for determining the well knownness of a trademark, registration certificates of other jurisdictions and their effective enforcement are considered relevant factors. Section 137 of the Trade Marks Act, 1999 can be interpreted to mean that only certified copies of registration certificates would be considered as acceptable proof of evidence. Attorneys usually submit the status pages of online databases to show that the mark is registered. However, copies of such status pages cannot be considered as acceptable evidence as the online databases maintained by all Trademark Offices specifically disclaim the use of status pages for legal purposes.
b) Copies of Awards, Accolades and Certifications: Documents like copies of awards issued by governmental and non-governmental organizations, certifications like ISO, BIS, Royal Warrants etc. are generally submitted to prove well knownness. Although such certifications, awards and similar public recognition instruments usually provide information about the history of a mark or indicate the quality of the products, these documents are not regarded as sufficient proof for determining the reputation of a trademark. With respect to Royal Warrants, the European Court of Justice held in the Windsurfing Chiemsee TM Application case, that such awards would only indicate that the brand is a traditional mark and in no manner prove the reputation of the mark. Therefore, evidences like copies of awards, accolades and certifications could only be regarded as supplementary documents and unless supported with appropriate sales invoices and sales turn over certificates, these documents do not have much value before a court of law.
c) Certified Copies of Year-wise Sales Turnover: The year-wise sales turnover for all jurisdictions in which the proprietor is offering goods or services under the alleged well known mark, is considered as acceptable evidence for proving well knownness. Two things should be taken into consideration while submitting a sales turnover. Firstly, the sales turner should not be an unsigned and uncertified document. Courts have repeatedly held that only the sales turnover which is duly certified by a Chartered Accountant or Auditor shall be regarded as an acceptable proof of evidence. Secondly, mere submission of amounts received by the sale of the products under the alleged well known mark would not constitute a valid proof. Instead, sales invoices should clearly reflect the quantity of products sold and the clear split of the quantity of products sold to different business segments or circles. In addition to this, the certified sale turnover should be supplemented with adequate number of sales invoices.
d) Notarized Copies of Sales Invoices: The year-wise sales invoices of products or services offered under the alleged well known trademark are considered as proof for usage of the mark. The proprietor of a mark is required to submit sales invoices from the date of use of the mark to prove continuous usage. Although there is no hard and fast rule as to how many invoices per year have to be submitted, it is always recommended to submit a minimum of 10-15 invoices for each year. Sales invoices must be notarized. Considering expenses involved in notarizing bulk documents, it is recommended to notarize the Table of Contents page of the relevant Annexure.
e) Copies of Advertisements and Ad Invoices: As discussed in our previous post, one of the key factors in determining the well knownness of a trademark is the extent of promotion and publicity the mark carries. In order to prove this factor, a proprietor of a mark is required to submit year-wise advertisement and promotional activities carried out under said mark. However, it is important to categorize the magazines or newspapers in which such promotional activities or advertisements appear. Generally, advertisements appearing in publicly available magazines or newspapers, instead of subscription based magazines are given more value. This would become more relevant in cases involving spill over reputations.
In our next post, we will discuss the key factors involved in trans-border reputation cases.