A trademark identical or similar to an already registered trademark cannot be registered. As per Section 11 of the Trade Marks Act, 1999, a trademark shall not be registered if it is identical to an earlier trademark. This provision prevents public confusion regarding the ownership or origin of the goods claimed.
For a mark to get protection under the Trade Marks Act 1999, it has to be registered with the Trade Mark Registry. When a mark is applied for registration, it can be objected by the Registrar of Trade Marks under two broad grounds.
i.e., Absolute Grounds & Relative Grounds. Section 9 of the Act lays down absolute grounds for refusal of registration, whereas Section 11 lays down relative grounds for refusal of registration. Section 11 prevents a mark that is identical or similar to a previously registered mark from getting registered. The applicant can take up several defenses when the registration is objected to under Section 11 of the Act.
“Honest Concurrent Use,” as laid down under Section 12 of the Act, is one of those grounds that the applicant can use to evade getting tangled in a trademark infringement battle. Section 12 of the Trademark Act lays down the doctrine of Honest Concurrent User. Concurrent use is when users have identical or similar marks on similar or non-similar goods. The main contention to prove the honest concurrent use is that the applicant has been using the mark in a bonafide manner and/or didn’t know the earlier registered trademark. The applicant must also prove that the relevant customers associate their mark with their product or service.
The section also provides that the registration of such a mark is at the subjective discretion of the Registrar; thus, the Registrar is in no way obliged to register such mark.
Documents to prove Honest Concurrent Use
Some of the documentary evidence which can prove honest concurrent use under Section 12 of the Act are:
1) If it is a mark already in use, then the evidence to prove the period of the usage of the mark;
2) Advertisements of the mark and the proofs of the amount spent on the advertisement of the mark;
3) The applicant can also produce books of accounts showing the yearly sales figures for goods/services offered under the mark.
All the above evidence helps the applicant to prove that the consumers have started associating the mark with his product/services offered under the mark.
Landmark Cases using the defense of Honest Concurrent Use
In the case of Kores(India) Ltd. v. M/s Khoday Eshwarsa and Son [(1984) Arb LR 213 (Bom)], five factors were laid down as being necessary for determining the registrability of a trademark. These were:
1. The quantum of the concurrent use of the trademark in connection with the goods concerned and the trade’s duration, area, and volume.
2. The degree of confusion likely to ensue from the resemblance of the marks indicates the measure of public inconvenience.
3. The honesty of the concurrent use
4. Whether any instances of confusion have been proved.
5. The relative inconvenience would be caused if the marks were registered, subject if necessary to any conditions and limitations.
In the case of Goenka Institute of Education and Research vs. Anjani Kumar Goenka and Anr. (2009), the appellant was allowed to use the mark “Goenka” with a condition to include the name of their trust below the name of their school to facilitate a clear differentiation between the two marks. The reason for using the doctrine of honest concurrent use was that both parties started using the mark “Goenka” at the same time, and both were based in different locations, so there would be minimal chance of public confusion.
Circumstances when Honest Concurrent Use cannot be used as a defense
The defense of Section 12 has got diluted over time primarily due to these reasons:
1. Well-known Trademarks: The Act provides enhanced protection to Well-known Trademarks. A well-known trademark gets protection in all the classes (NICE Classification) irrespective of its registration in a particular class. (Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan)
2. New and innovative advertisement methods tend to reach a more significant number of potential users. Online Advertisements and advertisements on social media have also contributed to a quick brand building of a company or business house.
3. The trans-border reputation of brands or marks: The brands are recognized by consumers or customers worldwide due to globalization. ( N.R. Dongre v. Whirlpool Corporation)
4. Possibility of brands expanding their business in the future, thereby expanding the possibilities of reaching broader consumers. Therefore the defense that the product or service is different from the product or service on which the mark is already in use now has a lesser impact since the earlier proprietor of the mark may expand his business in the future.
Conclusion
To conclude, when claiming honest concurrent use after receipt of a similarity objection or opposition, the applicant or the defendant should produce substantial evidence to substantiate such claims of the trademark’s extensive, honest, and concurrent use. Extensive, honest, and concurrent use of the disputed mark does not negate but mitigates the likelihood of consumer confusion due to the conceptual similarity of the marks. The primary objective of a Trade Mark is to act as a source identifier; if two identical or similar marks can exist without any public confusion, then the mark can be registered subject to the subjective discretion of the Registrar.
