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Trademark: Honest Concurrent Use

It is not possible to register a trademark that is identical or similar to an existing registered trademark. A trademark may not be registered if it is similar to a previous brand, according to Section 11 of the Trade Marks Act of 1999. This rule exists to avoid public misunderstanding about the ownership or provenance of the claimed items.

A mark must be registered with the Trade Mark Registry, as mentioned in Section 18 of the act, in order to be protected under the Trade Marks Act of 1999. When a mark is sought for registration, the Registrar of Trade Marks may object on two main grounds: absolute grounds and relative reasons. Section 9 of the Act specifies absolute reasons for registration denial, while Section 11 defines relative grounds for registration refusal. Section 11 essentially prohibits the registration of a mark that is identical or similar to an already registered mark. When a registration is challenged under Section 11 of the Act, the applicant has many options. “Honest Concurrent Use,” as defined in Section 12 of the Trade Marks Act of 1999, is one of the reasons that the applicant might use to avoid being embroiled in a trademark infringement lawsuit. Section 12 establishes the notion of the Honest Concurrent User. When consumers have identical or similar markings on comparable or dissimilar goods, this is known as “concurrent usage.” The fundamental argument for proving honest concurrent use is that the applicant has been using the mark legitimately and/or was unaware of the previously registered trademark. In addition, the applicant must demonstrate that the relevant consumers link their mark with their good or service.

The provision further states that the registration of such a mark is at the Registrar’s exclusive discretion and that the Registrar is under no obligation to register such a mark.

Documents for the verification of the Honest Concurrent Use

Documentary evidence that may be used to substantiate honest concurrent usage under Section 12 of the Act includes:

1) If it is an existing mark, the evidence to verify the mark’s time period of usage;

2) Advertisements and records of the amount spent on the mark’s advertising;

3) In addition, the applicant must provide books of accounts containing annual sales figures for goods and services sold under the mark.

All of the preceding information assists the applicant in demonstrating that customers have begun connecting the mark with his product or services supplied under the mark.

In the dispute of Kores (India) Ltd. v. M/s Khoday Eshwarsa and Son, five considerations were established as required for evaluating trademark registrability. They were as follows:

1.The amount of concurrent use of the trademark in connection with the product in question, as well as the length, area, and volume of commerce.

2. The degree of misunderstanding that is expected to result from the similarity of the markings is an indicator of the level of public dissatisfaction.

3. The veracity of the concurrent usage.

4. Whether or not any instances of misunderstanding have been proven.

5. The proportionate hardship that would be created if the marks were registered, subject to any rules and limits that may be imposed.

In Goenka Institute of Education and Research v. Anjani Kumar Goenka and Others, both the applicant and respondent owned a school and used the term “Goneka” in their respective trademarks, namely “Goneka Public School and” and “G.D. Goneka Public School.” As a result the Court granted the registration on the basis

1. Both schools were founded at the same time and began using the same names,

2. There would be minimal chance of public confusion as one institution is located in Delhi while the other is in Rajasthan, and

3. The applicant uses the term “Goneka” since it is part of its trust name.

As a result, it was allowed to be registered under an honest concurrent user.

Cases when Honest Concurrent Use cannot be used as a defence.

For these reasons, the defence of Section 12 has been diluted over time:

  1. Well-known Trademarks: The Act strengthens the protection afforded to well-known Trademarks. A well-known trademark is protected in all classes (NICE Classification), regardless of whether it is registered in a specific class. For example, the Plaintiff, Mercedes-Benz, argued in Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan, that the Defendant was unjustly using the Plaintiff’s mark “Benz” for sale. While prohibiting the defendant from using the brand mark, the court determined that there was no legal reason why any merchant in India could take the brand “Benz,” which was associated with one of the world’s best designed vehicles, and use the exact name with regard to ordinary commodities, in this case, undergarments.

The court emphasised the trademark’s international renown, remarking that very few people would confuse the name “Benz” with the vehicle. As a result, no one can claim that he was uninformed of the use of the mark “Benz” in connection with vehicles.

  • Fresh and innovative advertising strategies tend to reach a wider number of prospective consumers. Online ads, such as those on social media, have also aided in the rapid development of a company’s or business house’s trademark.
  • Brand or mark transnational reputation: As a result of globalisation, brands are recognised by consumers or customers all over the globe.

Like in the case of N.R. Dongre v. Whirlpool Corporation, 1996, the Hon’ble Supreme Court concluded that mere advertising of a brand was sufficient to determine local usage and goodwill even if products were not physically present in the Indian market. This judgement strongly upheld the idea of a mark’s transborder repute, even against the registered owner of the trademark. 

  • The prospect of future brand extension, which would provide an opportunity to reach a bigger audience. Because the previous owner of the mark may extend his company in the future, the defence that the product or service is distinct from the product or service on which the mark is currently in use has less significance.

To summarise, upon receipt of a similarity objection or opposition, the applicant or defendant must provide sufficient evidence to support such allegations of wide, honest, and contemporaneous use of the trademark. Extensive, honest, and contemporaneous use of the challenged mark does not eliminate, but rather minimises the possibility of consumer confusion due to the marks’ conceptual similarity. The primary purpose of a Trade Mark is to serve as a means of identification, and if two identical or similar marks may coexist without creating public confusion, the mark may be registered subject to the Registrar’s subjective judgement.

By Priyasha Sen Gupta