File Smart: The ‘User Claim’ Versus ‘Proposed To Be Used’ Dilemma Decoded
- Prabhsimran Kaur
- 15 minutes ago
- 5 min read
In today’s digital age the importance of securing trade mark registrations is increasing. Every new brand owner before the launch of their brand seeks advise on protecting their brand identity and simultaneously securing trade mark registrations. Not only new, even the owners of existing brands are expanding their trade mark portfolios and being proactive in protecting their existing brands as well as their registered trade marks. It is a common misconception that a trade mark owner thinks they have rights over its mark once the trade mark is registered, regardless of the use. A trade mark means a word, name, symbol, slogan, design, colour combination, shape of goods, etc., that can be represented graphically and is capable of distinguishing its goods/services from those of others. A trade mark is associated with the goods or services as applied for by the owner. However, a trade mark registration has its limitation that is the enforcement of the marks is limited to the particular goods or services for which trade mark registration is secured.
Types of Trade Mark Applications:
When filing trade mark applications under the Indian Trade Marks Act, 1999, (hereinafter referred to as the “Act”) the Applicant must declare the statement as to use of the mark i.e., either ‘Proposed to be used’ or ‘Use Claimed’.
1. Use Claimed
A ‘Use Claimed’ application is filed when the Applicant has already used the trade mark in India in the ordinary course of the trade prior to filing of the trade mark application. The expression “use in the course of trade” has a wide and overarching scope. The combined reading of Section 2 (2)(b) and 2(2)(c) of the Act, lays down that the use of the mark shall be construed as a reference to the use of printed or visual representation of the mark. Thus, the use of a mark in relation to goods include the use of the mark upon, or in physical or in any other relation whatsoever, to such goods. In relation to services, it shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services. [1]
Procedural aspects for applying with a use claimed:
Under Rule 25(1) of the Trade Marks Rules, 2017, (hereinafter referred to as the “Rules”), if the Applicant is claiming use of its mark in the trade mark application, then the exact period of use in India must be stated. Under the same rule, the Applicant is also required to submit an Affidavit testifying to such use claimed in the Application with the supporting evidence.
While there is no set list of supporting evidence required for filing along with Affidavit, the following list of documents substantiate the user claim:
● Copies of invoices/bills;
● Extracts from website or online platforms;
● Product packaging and labels;
● Advertising and marketing material; and
● Proof of participation in events and/or exhibitions.
However, it is imperative that the aforesaid documents show the use of the trade mark as applied.
Further, as per Section B: Filing of Trade Mark Application of the Manual of Trade Marks, Practice & Procedure, a user claimed in the trade mark application will not be allowed to be changed subsequently.
Advantages of filing a trade mark application with a user claim
India is a country that follows the first-to use rule, and therefore the application of a trade mark with a user claim strengthens the position of the Applicant in case of similar later-filed or even earlier-filed proposed to be used applications. Further, the user claim date offers a superior right to the Applicant over others, even if their application were filed earlier. Moreover, a trade mark application filed with a user claim-and continuously used- is less likely to attract non-use cancellations/rectifications under Section 47 of the Act.
Thus, the main takeaway from filing use claimed applications is that the Applicant must be bona fidely using the trade mark for the goods and/or services actually applied for in commerce and the Applicant should be able to prove the same with cogent supporting documents.
2. Proposed to be used basis
A Proposed to be used basis claim applies when the Applicant has not commenced use of its trade mark in India as on the date of application but has the honest intention to do so in the near future. Further, this option facilitates blocking subsequent applications for identical/similar marks from competitors. Under this option, the Applicant is not required to file any Affidavit or supporting evidence along with the trade mark application.
Advantages of filing trade mark application with a proposed to be used claim
Under the Act, once the trade mark is registered, the Applicant has a period of five years and three months, from the date of the registration of the mark, to commence use of the mark. It is only after this said period that the trade mark becomes vulnerable to non-use cancellation under Section 47 of the Act.
Thus, this option is definitely an easier and quicker route when applying for a trade mark and allows the businesses to secure trade mark rights before launching their product or service, offering strategic protection during the pre-launch and branding phases.
Strategic Considerations: Which Application Is Right for You?
Determining whether to file a trade mark application on a use claimed basis or a proposed to be used basis is not merely a question of timing- it is a matter about strategic alignment. The appropriate filing basis should correspond with your business model, product launch time line and appetite for legal and commercial risk.
In cases where your product or service is already in the market and generating considerate revenue under the trade mark, a used claimed trade mark application is typically the efficient route. It allows for a broader protection over the brand and provides the Applicant with stronger earlier rights.
Conversely, in cases where your brand is still in the development phase, or you intend to secure trade mark rights before launching your brand in the public domain, filing a proposed to be used trade mark application offers a critical strategic advantage. It allows you to reserve your rights in the trade mark ahead of the market entry, potentially pre-empting competitors, while providing the flexibility to develop, redefine, and launch your products or services at a strategic pace.
Conclusion:
From the foregoing, it can be construed that both the options are powerful tools in the sphere of brand protection. Each filing basis offers distinct advantages, depending upon the stage of the brand’s lifecycle and Applicant’s business strategy. Ultimately, the choice between the “use claimed” and “proposed to be used claim” should be guided on careful assessment of both legal protection goals and commercial readiness.
Prabhsimran Kaur
Senior Associate
