Guidance

How to complete a witness statement

Published 8 November 2019

Witness statement header

The statement must be headed ‘Witness statement’. Under this (usually on the right-hand side) you should insert details of:

• the application number and, if applicable, the opposition/cancellation number
• the name of the applicant/proprietor
• the name of the opponent/applicant for cancellation (if applicable)

Part 1: who is making the statement

You should insert the following information:

• the name of the person making the statement
• their address - usually the official business address but it could be their private address
• their position, status, or rank within the company (if applicable)
• the company name (if applicable)
• the source of their information - personal knowledge, company records, or other

Part 2: body of the statement

This is where you include the facts you wish the hearing officer to know about the use of the mark or, if applicable, about the relationship between the parties.

Please provide any information about the use of the mark which you think can help your application.

You should provide any documentary evidence to support your statement in the form of exhibits. The exhibits need to be mentioned in the witness statement and should be clearly labelled. If possible, include separate header sheets for each exhibit.

If your evidence is about the use you have made of your trade mark/unregistered mark, you should provide evidence of, for example:

Sales or turnover

Give the amount of annual sales or turnover under the mark. If you need to show use for different goods and/or services, you should provide separate figures for the different categories of goods and services, as far as possible. If this is not possible and the registration covers numerous categories of goods/services, you should provide an approximate percentage breakdown of the sales relating to the various categories of goods/services.

Invoices and price lists may be provided as exhibits. You should make sure that the figures relate to the relevant period and to the UK (or the EU, if it is an EU trade mark). If possible, explain where in the UK (or EU) your mark has been used. You may also wish to provide evidence of market share if available.

Advertising

Give the annual amounts spent on advertising or promoting the mark in relation to the goods/services at issue. State what sort of advertising you have used (for example: TV, radio, titles of newspapers or magazines, hoardings and so on). It will help if you include samples of the advertisements as exhibits. If you want to file evidence from brochures, you can just copy the cover and the relevant pages, rather than the whole document.

Once again, you should provide information relating to the relevant period and territory.

Media/other promotional activities

You may wish to provide examples of press or online articles which show how widely your mark is known. Other types of promotion could include attendance at trade shows and exhibitions. Evidence of this can be included as exhibits and should be from the relevant period and relate to the relevant territory.

In showing the distinctiveness of the mark, statements from chambers of commerce and industry or other trade and professional associations may be of assistance.

If your evidence relates to any other matters (for example bad faith)

You should explain the facts which you consider support your case. If there has been an official objection at application stage on the grounds of bad faith, you should explain your legitimate interest in the mark. After publication, if there were any relevant agreements between the parties, for example, you should provide evidence of these. If the relationship between the parties at the time of filing is important, you should explain it fully. Documentary evidence (such as contracts/agreements) can be attached as exhibits.

Part 3: statement of truth

The statement must include the words ‘I believe that the facts stated in this witness statement are true’. Then sign and date the statement.

If the statement of truth and signature are on a different page from the rest of the statement, the whole statement (including the statement of truth) should have paragraph numbers.

Notes for providing evidence

All of your evidence should have numbered pages. If possible, all paragraphs of the witness statement, including the statement of truth, should also have paragraph numbers.

Archive website prints (such as from the Wayback Machine) can be helpful in showing how goods/services/marks were displayed on websites in the relevant period. If you do not use archive prints, you should confirm in your statement whether the use shown is the same as it was at the relevant time.

Evidence is about giving facts. If you want to give your opinion about something (for example how similar trade marks are) or make points about the law, these should be filed separately as submissions (see glossary of terms).

In tribunal proceedings

Evidence in chief for tribunal proceedings (i.e. opposition or cancellation actions) is limited to 300 pages. You will need to seek permission and provide good reasons if you need to exceed this limit.

In tribunal proceedings (i.e. opposition or cancellation actions), if you want to rely on something on a website, you should provide a copy of it as an exhibit. Exhibits should have a header sheet with the exhibit number. If you only include a link in your statement, the hearing officer won’t look at it (because the link might not work or the content may not be the same at the time of the decision or any appeal).

At examination stage

There is no limit on evidence for official objections prior to publication.

Pre-publication, you may file links to websites in your evidence. These will be considered by the hearing officer.