Significance of ‘date of First Use’ in Trademark Application

Published On: May 11, 2019Last Updated: Aug 1, 20223.6 min read

Trademark registration is specifically for claiming a right over a particular word /logo/ a combination or both before anyone else and benefiting from the exclusive rights therefrom. An individual company who applies first for trademark registration in India gets priority over that name. So, the date of first use is necessary through the process of trademark registration.

What is date of first use?

Basically, the date of first use is the earliest date from which the brand is being used commercially. Claiming a date of first use can prove to be a boon during the trademark application procedure.

Let us understand how ‘date of first use’ works:

When two trademark applications are applied for and compared, the one that claims a date of first use of the trademark has a better chance of getting the exclusive right to use the trademark. Hence, if you have been using the name before going in for the trademark registration process you must claim the use of the said brand from that date. Otherwise, one should opt for ‘proposed to be used’ if there is no claim to any date of first use.

Mentioning a date of use in a trademark application without concrete supporting documents is insufficient. Mere stating any particular date is not enough. One must be able to provide valid proof for the same. Claiming prior use without proof is not permitted.

What proofs can support the claim of ‘prior use’?

The documents that can provide evidence for the claimed use can be:

•    Invoices and bills of each year from when the mark is in use

•    Advertisements such as flyers, brochures, and leaflets that have been publicly distributed

•    Website pages that promote the services

•    Radio advertisements

•    Television commercials

•    Government Registration Certificates

These documents should contain the brand name and the date and proof that the brand name was used for a commercial purpose.

Advantages of claiming the date of first use –

1. Makes the mark distinctive

Continuous use of a brand name or logo helps in creating a secondary meaning. This helps the brand get distinct recognition in the market. For example, usually, registration of common names and surnames is not permitted, but if it is easily recognized by the public and they differentiate it from other products in the market due to the distinct name or logo, the registration would be permitted. A mark which otherwise may be denied might get registered because of a claim of prior continuous use.

2. Dealing with objections and proceedings

The applicant who claims prior use usually has the upper hand in claiming right over the trade name. If an objection or a third-party opposition is raised, prior use can help the applicant regain his right. However, it is important that a valid user date is mentioned in the application, it cannot be claimed at a later stage.  

3. Provides an exclusive right to use the trademark

The Trade Marks Act restricts the registered TM owner from interfering with the rights to use of a prior user. The prior user gets priority in registration. Moreover, trademark owner can prevent any third person from trademark registration or infringing the mark that is similar to such a prior company or individual.

4. Prior usage and passing off

Passing off is a common law tort that is used to enforce unregistered trademark rights. If the unregistered trademark owner has been using the brand name before the registered owner, his right to use cannot be taken away.

Conclusion

Trademark registration has its perks. To prevent trademark infringement and keep your trademark well secured it is always better to state a valid user date in the trademark registration application. The prior use claim adds the value of goodwill built over the years and makes the applicant’s right over the trademark stronger. Hence a valid claim with an affidavit testifying to such use along with supporting documents should be along with the application. Such a claim can turn tables in a trademark case.

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Kahini Jhaveri
About the Author

Kahini Jhaveri

Kahini Jhaveri is an IP specialist at LegalWiz.in, with a keen interest in content creation. She holds a B.A. LLB honours from Institute of Law, Nirma University, Ahmedabad. Kahini specializes in Intellectual Properties, specifically Trademark Law.