Draft Trade Marks Manual: what counts as proof of prior use, and how a mark gets on the well-known list

What has been published

A document titled “A draft of Manual of Trade Marks — Practice & Procedure” has been published on the IP India website. It is a draft: the practices it describes are proposed, not settled. The document prints no last date for comments.

Seven chapters

Prior use: two kinds of documents

Rule 25(2) of the Trade Marks Rules, 2017 requires an affidavit with supporting documents where use is claimed before the date of application. The draft divides those documents into two classes.

• Primary (conclusive): sales invoices, purchase invoices linked to the goods or services sold, an earlier registration of the same mark in the same class, a well-known declaration entered in the Registry’s list, dated website or app pages and e-commerce listings, and advertisements carrying the mark, the date and the proprietor’s name.
• Secondary (corroborative): brochures, photographs of buildings and shops, company booklets, annual reports, registrations of the mark in other classes, and a court’s well-known declaration not yet entered in the Registry’s list.

A sales invoice, the draft says, should carry the trade mark, the description of goods or services, the seller’s name, the TIN/GSTIN and the date; if even a single detail is missing, it “will not be considered a genuine document for use of the Trade Mark”.

Invoices must also match the class. A bill for “one cup of coffee” proves restaurant services in Class 43; a bill for a “packet of tea” shows only a sale of goods and cannot support Class 43 — and the reverse holds for Class 30.

On continuity, the draft asks for user documents showing the mark in the market without interruption, with at least quarterly documents, except in force majeure events such as the Covid-19 pandemic. In the same passage it also speaks of one document or invoice for every 3–4 years for a longer period of use. The two statements sit side by side in the draft and are not reconciled.

Well-known marks

• A request is filed only electronically, on Form TM-M, with the fee in the First Schedule and a statement of case with evidence.
• A deficiency communicated by the Registrar is to be answered within 30 days, failing which the request may be treated as abandoned.
• If the Registrar is of the opinion that the mark can be determined as well-known, it is published in the Trade Marks Journal; any party may object within 30 days of publication. If objections come in, the applicant gets 30 days to reply and both sides are heard before a reasoned order.
• The Registrar is not to require that the mark has been used or registered in India, or is well-known to the public at large in India.

What applicants should do

If you claim use from an earlier date, look at your invoices the way the draft does: is the mark on them, is the GSTIN there, do they describe the goods or services of the class you applied in? Since this is a draft, wait for the final manual before treating its tests as fixed.