The concept of honest concurrent use provides an important exception to the general rule that only one trademark should exist for particular goods or services. Section 12 of the Indian Trade Marks Act, 1999, offers a legal avenue for registering identical or similar trademarks by different proprietors under certain conditions. In this blog, we will explore how this provision operates, its significance in Indian trademark law, and the factors the Registrar of Trademarks considers when allowing concurrent use registrations.
Section 12 of the Trade Marks Act states that in cases of honest concurrent use or other special circumstances, the Registrar has the authority to allow the registration of identical or similar trademarks by more than one proprietor for the same or similar goods or services. This provision stands as an exception to Section 11(1), which typically prohibits registration of a mark that conflicts with an earlier mark.
The intention behind this provision is to balance the potential for public confusion with the commercial claims of a trademark proprietor who has been using the mark concurrently and honestly. This concept recognizes that two businesses may, without knowledge of each other’s activities, concurrently adopt and use the same or similar trademarks.
There are several ways in which concurrent use can be established:
- When a person uses a mark in good faith without knowing of any prior existing identical or similar mark in the same category of goods or services.
- When the goodwill of a business is divided, such as in cases of dissolution of partnerships, where multiple entities are given rights to the same or similar trademarks.
- When the provisions under Section 34 of the Act are applicable, allowing earlier users certain rights.
- The user must show prior usage before applying for registration, not after.
- The user must claim the mark as a whole, not parts of it.
- If the trademark is used for goods or services meant solely for export purposes.
To grant registration based on honest concurrent use, the Registrar considers various factors. The most prominent case discussing these factors is the EasyJet case, which provided a clear framework:
- Duration, area, and volume of trade: How long and extensively has the mark been used?
- Degree of public confusion: Is the likelihood of confusion between the concurrent marks minimal, and how much inconvenience would this cause to the public?
- Honesty of the user: Was the adoption of the mark honest and in good faith?
- Instances of actual confusion: Have there been any documented cases of confusion between the marks?
- Balance of convenience: What inconvenience or hardship would arise from allowing or refusing registration?
Though these are standard considerations, the Registrar has broad discretion to evaluate the unique facts of each case, as stated in Kerly’s Law of Trade Marks. Even in cases of potential confusion, registration may be granted when the commercial and business interests outweigh the risk of public confusion.
One of the landmark cases on honest concurrent use is Consolidated Foods Corp vs. Brandon & Co., where the court allowed concurrent registration when both parties, unaware of each other’s marks, adopted and used similar trademarks for similar goods. The court emphasised that the user’s conduct must be honest, and their use must be commercially relevant.
Another significant case is Sadhoo vs. SM Nasir (2009), where the Intellectual Property Appellate Board (IPAB) recognized the rights of a small trader using a trademark honestly and concurrently with a much larger international competitor. Despite the small scale of his business, the small trader was entitled to protection under the law, as the honest concurrent use of his mark created valuable commercial goodwill.
One of the major challenges with claiming honest concurrent use is proving it. The burden of proof is on the applicant, who must show clear and convincing evidence that their use of the mark has been honest, without the intention to deceive, and that it has been concurrent with another party’s use. Furthermore, establishing the duration, geographical extent, and volume of trade conducted under the mark is crucial to the application’s success.
Moreover, no specific rules exist regarding the minimum period of concurrent use required. While continuous and substantial use strengthens the applicant’s case, courts have allowed shorter periods of use combined with other exceptional circumstances to justify registration under Section 12.
In essence, the honest concurrent use provision strikes a balance between protecting consumers from confusion and safeguarding the business interests of concurrent users. By allowing multiple proprietors to use identical or similar trademarks under specific conditions, the law ensures that genuine commercial interests are not unduly restricted.
At Legal Terminus, we are here to guide you through the complexities of trademark law, including applications for honest concurrent use. With our team of experienced trademark attorneys, we ensure that your application is backed by the necessary evidence and presented in a way that maximises your chances of success. Whether you’re a small business owner or an established company, we provide expert advice tailored to your unique needs.
The information provided in this article is for general informational purposes only and does not constitute legal advice. For professional guidance specific to your situation, we recommend consulting with a qualified legal expert. Legal Terminus is not liable for any reliance placed on the information in this blog without seeking individual legal consultation.
Regards
CS Shipra Mishra
(B. Com, LL.B, FCS, Insolvency Professional, Registered TM Agent)