Honest Concurrent Use of Trademark

Introduction and Meaning

When a mark’s owner obtains registration but never uses or uses it rarely, this is an example of “honest concurrent usage.” However, throughout the registration period, another individual or firm has used an identical mark in similar goods or products in an honest and concurrent manner. Because it is impossible to demonstrate unequivocally that there is no such person using an identical or similar mark, the burden of evidence in trademark law states that an applicant must establish prima facie contentions that there is no such person using an identical or similar mark. The registrar may take notice of a scenario that would allow it to create a presumption that such a situation does not exist based on “the common course of natural events, human behavior, and public and private business.”

If an objection is presented, however, such a presumption is not raised. The duty then shifts to the objecting individual to establish his case in line with the principles of section 101 of the Evidence Act, 1872, and to show that the mark’s registration would cause him significant harm. In the case of concurrent registration of identical or similar marks, the applicant bears a substantial burden of proof to establish the existence of the following conditions, the results of which are inherently subjective.

  1. The extent of concurrent use of the trademark in relation to the products in question, as well as the duration, area, and volume of trade.
  2. The degree of public inconvenience that is likely to result from the resemblance of the marks.
  3. The truthfulness of concurrent use
  4. Whether any instances of confusion have been proven.
  5. The potential for inconvenience if the marks were registered, subject to any conditions and limitations.

Section 12 deals with the honest concurrent case. One of the grounds that the applicant might utilize to avoid getting wrapped up in a trademark infringement lawsuit is “Honest Concurrent Use,” as defined by Section 12 of the Act. The doctrine of Honest Concurrent User is laid out in Section 12. When consumers have identical or similar markings on similar or non-similar goods, this is known as concurrent use. The applicant’s major argument for proving honest concurrent use is that he has been using the mark in a legitimate manner and/or he was unaware of the earlier registered trademark. The applicant must also show that their mark is associated with their product or service by relevant customers.

In the case of honest concurrent use or any other special circumstance that the Registrar may deem it, Section 12 of the Trademark Act expressly states that the Registrar may accept the registration of a trademark that is identical or similar in the hands of two separate organizations that provide identical or similar goods and services.

Section 12 Registration in the case of honest concurrent use, etc
In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

Case laws
Goenka Institute of Education and Research vs. Anjani Kumar Goenka and Anr. 2009 (39) PTC 720 (Del.)
Goenka Institute of Education and Research had been using “Goenka” for their school “Goenka Public School” since 2000 and were prior users of the trademark. Further, the Goenka Institute of Education and Research is running “Mohini Devi Goenka Mahila Mahavidyala” since the year Anjani Kumar Goenka registered “Goenka” as a trademark in the year 2005 and had never per se used “Goenka” i.e “Goenka” itself and has used the same only as part of “GD Goenka Public School”. The court allowed the Goenka Institute of Education and Research to use the mark “Goenka” with the condition to include the name of their trust below the name of their school in order to facilitate a clear distinction between the two marks The fact that both parties began using the mark “Goenka” at nearly the same time allowed the use of the doctrine of honest concurrent use both were based in different cities, so there was little chance of public confusion.

Satilila Charitable Society v Skyline Educational Institute 2010 (42) PTC 217 (SC)
Despite the existence of the opposing party’s ‘Skyline’ business school, an engineering institution called ‘Skyline’ was permitted to operate. The court reasoned that because ‘Skyline’ is neither an invented nor a specific word, it must be considered a generic term, especially since thousands of people and businesses use it as part of their trading name or business activities. Even the Appellant’s prior use of the name ‘Skyline’ would not confer an exclusive right to use that name to the exclusion of others. The Court was of the view that students are sufficiently aware of the credentials of the educational institutions they wish to enroll with and thus there would be no likelihood of confusion among the student fraternity.

To summaries, the applicant or defendant should offer compelling proof to corroborate claims of broad, honest, and contemporaneous use of the trademark after receiving a similarity objection or opposition. The potential of consumer misunderstanding owing to the conceptual resemblance of the marks is mitigated by extensive, honest, and contemporaneous use of the contested mark. The fundamental goal of a Trade Mark is to serve as a source identification, and if two identical or similar marks may exist without causing public misunderstanding, the mark can be registered at the Registrar’s discretion.

Needless to say, there are no clear benchmarks for analysing the Courts’ positions in this respect, as most rulings appear to have been made on a case-by-case basis. To be honest, the defence has
weakened over time as a result of the risk that the marks may get a global notoriety (as was recognised by the court in the Whirlpool case), the pervasive impact of technology and the media

on trademarked goods’ goodwill (Indian Shaving Products Ltd. vs. Gift Pack), which means brands are now more global than local, or the increased diversification of well-known brands into related or disparate industries, which leads courts to impose territorial limitations on brands pleading the honest concurrent defence, thereby restricting their operations to a specific area (s).
Vranjilal Manilal & Co vs. Bansal Tobacco Co. (2001) and A B Textiles vs. Sony Corporation
are two excellent instances (2007).

Satilila Charitable Society And … vs Skyline Education Institute (I) … on 6 October, 2004
Goenka Institute Of Education & … vs Anjani Kumar Goenka & Anr. on 29 May, 2009 (indiankanoon.org)
Trade Marks Act, 1999 | Bare Acts | Law Library | AdvocateKhoj
Honest Concurrent User of Trademarks – Legal 60

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