Trade Mark Evidence: Building A Record Before a Dispute

Introduction : Most companies build their brand mark without even thinking about defending it from others. Most companies maintain records such as sales, advertising, and distribution records only for accountancy and operational purposes, hardly seeing that the brand they have built from scratch may need to be proved if challenged. The alarm rings once a cease-and-desist notice, rectification petition, or any infringement or passing-off claim knocks on the door, and the proprietor is requested to prove since when the mark has been used, on what goods/services, and with what reputation. By then, records are scattered or lost, and dated samples of the earliest packaging are hardly found.

Even a registered mark does not save the proprietor from the burden of proving the use. It is prima facie valid, but it does not help with proof of urgency, reputation, or local spread of goodwill. This blog will help you to understand how dated invoices, campaign records, distribution records and documentation, surveys, and dated samples of products with batch numbers can substantiate the claims and distinguish ordinary proof of use from the cogent evidence needed to establish reputation or well-known status.

Legal Provisions

A. The Trade Marks Act, 1999 and the Trade Marks Rules, 2017

Section 2(1)(zg) describes a well-known trade mark in terms of recognition of the mark by a significant part of the public that consumes the goods or receives the services. Section 11(6) requires the Registrar to take into account, inter alia, knowledge or recognition in the relevant section of the public, the period of use and promotion, the period and extent of registration, and records of enforcement. Section 11(7) specifies the relevant section of the public as actual or potential consumers, those involved in the channels of distribution and those who deal with the goods or services. Section 11(9) prohibits the Registrar from requiring use in India, registration, or recognition by the general public.

The date of continuous use matters at several points in the Act. The proviso to Section 9(1) allows the registration of a mark even if it lacks inherent distinctiveness but has acquired distinctive character before the date of application, and Section 32 protects registration of a mark on that ground. Section 34 prevents a registered proprietor from stopping other proprietors who have continuously used an identical or nearly similar mark from the date prior to the proprietor’s registration or use, whichever is earlier. Section 47 authorizes removal of a registered mark for lack of bona fide use for a continuous period of five years, which can be measured up to three months before the application.

Rule 124 of the Trade Marks Rules, 2017 allows any person to request the Registrar for determination of a trademark as well-known by filing an application in Form TM-M along with a statement of case along with all the evidence and documents relied upon. Correspondingly, evidence led by the opposition is also filed with an affidavit under Rules 45 and 46.

B. Electronic Records and Commercial Litigation

Nowadays, vital evidence exists online in e-commerce databases, website captures, and analytics. Section 63 of the Bharatiya Sakshya Adhiniyam, 2023 (corresponding to Section 65B of the Indian Evidence Act, 1872) requires a certificate under a prescribed form for the admissibility of such electronic evidence and the same has been repeatedly held by the Supreme Court of India in a catena of judgments as a mandate for the admissibility of secondary electronic evidence.  

In commercial suits, Order XI of the Code of Civil Procedure, 1908, as amended by the Commercial Courts Act, 2015, discusses electronic records and documents in the power, possession, control or custody of the Plaintiff which are required to be filed along with the Suit, and later production of any documents requires the leave of the Court.

Legal Analysis

A. Ordinary Proof of Use

Ordinary proof of use proves that the mark has been used previously, on what goods or services, from which date and without any discontinuity. It proves the date in the application, priority claim under Section 34, defense against a non-use claim under Section 47 and an earlier use claim in opposition. The important documents consist of dated invoices and delivery challans showing the mark and specifying the goods, labels and packaging used for each period, catalogues and price lists, and dated pictures of the website or marketplace listings. A document is useful only when it proves the date, source, and possession of the document. In web captures, it is essential to include the URL and date. In samples, it is essential to include the batch and date, and for electronic documents, it is important to keep them in their original form along with their metadata to certify them under Section 63 of the Bharatiya Sakshya Adhiniyam, 2023.

The three common mistakes are that the mark on the invoice does not resemble the claimed mark; the documents prove the first and the recent sale, but nothing in between; and the documents are not dated or do not specify the goods or services. Ordinary proof of use is not the same as reputation. The invoices may prove the sale of goods or services using the mark, not the reputation amongst traders or consumers.

B. Reputation

Goodwill is essential for a passing off claim. In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., the Supreme Court relied on the territoriality principle and held that reputation in India as on the relevant date must be proved. The evidence proving the reputation of a mark must show its growth and geographical reach over time.

Useful records include yearly and state-wise sales along with supporting records of accounts certified by a chartered accountant; advertising expenses with media agencies, their invoices and proof of publications/broadcasts; distribution/dealership agreements with territory-wise lists reflecting the reach; involvement in exhibitions; unsolicited media coverage and awards; and digital reputation through marketplace rankings and social media reach. Consumer surveys can also prove reputation, but the reliability of such surveys depends upon how they were conducted, a proper sample, neutral questions, and an independent agency. Conducting consumer surveys after the dispute begins may lead to an argument that the survey was artificial.

C. Well-Known Status

Well-known status is not merely a higher version of local reputation. The record must show the recognition of a mark in a relevant section of the population across the country over a significant period of time, and Section 11(9) makes it a relevant section and removes the condition of recognition among the public at large. In Kamdhenu Ltd. v. Registrar of Trade Marks, the Delhi High Court held that the evidence under Rule 124 should be substantially documentary, such as invoices across a wide area, advertising expenses, participation in trade fairs, surveys, enforcement orders, records of all distributors and retailers, awards and account statements, and further held that an affidavit is not always mandatory. An affidavit can only describe documents but cannot substitute them.

The “record of successful enforcement” under Section 11(6) requires a separate record of injunction, opposition and rectification orders and previous recognitions, preferably in certified copies. In Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr., i.e., the ZARA-ZORA dispute, the Delhi High Court held that the formal declaration under Section 11(2) is not a prerequisite, and applied the test of Section 11(6) based on the facts, circumstances and evidence before the Court.

Relevant Case Laws

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1: The Supreme Court applied territoriality to the passing off claim and the reputation of the trademark required to be proved in India on the relevant date, but the evidence was insufficient.

Kamdhenu Ltd. v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 66/2021 (Del. HC, 6 July 2023): The evidence under Rule 124 should be substantially documentary, and an affidavit is not mandatory, and the Registrar should allow the applicant to submit the same before rejecting the application.

Arjun Panditrao Khotkar v. Kailash Kushanrao Gorantyal, (2020) 7 SCC 1: A certificate under Section 65B(4) of the Indian Evidence Act, 1872, is essential for secondary electronic evidence.

Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr., 2026 : DHC : 5373: In an appeal under Section 91, the High Court held that a prior well-known mark under Section 11(2) declaration was not a mandate and canceled the ZORA registration in Class 24 for insufficient evidence.

Practical Implications

Implementing a retention schedule creates a strong documentary defence. Priority documents such as the first invoices, first design, and domain registrations should be kept permanently, and the same applies to all legal documents related to the mark. The operational documents should be kept for as long as the trademark is in use. The sales summaries, advertising expenses, and distribution agreements should be updated and compiled annually. Product samples should be captured on camera whenever the packaging has been changed; otherwise, at least once a year, while digital media and website captures should be kept quarterly. Advertising records such as media plans, agency invoices, proof of publication or broadcast, should be kept per campaign and consolidated annually. Recognition records such as awards, exhibitions, surveys, etcetera should be kept as they occur. Every year, the trademark owner should index the records, retain off-site copies, and get the signature of both the chartered accountant and marketing head. In case a legal dispute is anticipated, deletions of documents related to the mark should be stopped.

Conclusion

Trade mark disputes are decided upon the documents which are cogent and sterling material evidence; if a document is not retained, then it will never be produced. Ordinary proof of use needs dated and continuous records showing the mark therein. Proof of reputation of well-known status requires proof of scale, reach and recognition in accordance with the standard described under Section 11(6) and Rule 124. Law does not compel a proprietor to retain or maintain a record of this kind, but the cost of doing so is lower than the cost of proving the history of a Trade mark in a dispute.

Author: Udit Kumar Verma in case of any queries please contact/write back to us via email to content@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney