This Article is written by Himanshu Batar from IMS Unison University, Dehradun.
A trademark plays a key role with the establishment of a brand. It helps in creating a sense of trust of the customer within the product by just having a look at the trademark. Trademark, by definition, could be a unique sign (comprising of a reputation, word, phrase, logo, symbol, design, et al or a mixture of 1 or more of those elements), used for the aim of prima facia identifying the goods/services of one trader from those of other traders within the market; it’s going to come as no less than a surprise to trademark proprietors that identical or similar mark can exist in respect of identical or similar goods or services and one such exception is “Honest Concurrent Use”.
Honest Concurrent use of Trademark
Section 12 of the Trade Marks Act, 1999 provides for registration of a trademark in case of honest and concurrent use depending upon the subjective discretion of the Registrar.
The burden of proof under the evidentiary aspect of trademark law says that an applicant is needed to establish prima facie contentions that there is no such person using an identical or similar mark, because it isn’t possible to point out conclusively that there is no such person. The registrar may make note of a state of affairs that might enable it to lift a presumption that according to “the common course of natural events, human conduct, and public and private business” such a situation doesn’t exist. However, if an objection is raised such a presumption wouldn’t be raised. Then the burden is on the objecting person to prove his case in accordance with the principle of section 101 of the Evidence Act, 1872 and he must also prove that the registration of the mark would be of material detriment to him.
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:
- The quantum of the concurrent use of the trademark in reference to the products concerned and also the duration, area and volume of the trade.
- The degree of confusion likely to ensue from the resemblance of the marks, which is to a sign of the measure of public inconvenience.
- The honesty of the concurrent use
- Whether any instances of confusion have actually been proved.
- The relative inconvenience, which might 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 so in order to include the name of their trust below the name of their school so as to facilitate a crystal clear differentiation between both the marks. the reason which allowed the use of the doctrine of honest concurrent use was that both the parties started using the mark “Goenka” at the same time and both were based two different locations so there would be minimal chance of public confusion.
Circumstances when Honest Concurrent Use can’t be used as a defense
The defense of Section 12 possesses diluted over time primarily thanks to these reasons:
- Well-known Trademarks: The Act provides enhanced protection to Well-known Trademarks. a widely known trademark gets protection in all the classes (NICE Classification) regardless of its registration within a particular class. (Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan)
- New and innovative methods of advertisements tend to achieve bent a bigger number of potential users. Online Advertisements and advertisements on social media have also contributed to a fast brand building of a corporation or business house.
- The trans-border reputation of brands or marks: thanks to globalization, the brands are recognized by consumers or customers everywhere on the planet. ( N.R. Dongre v. Whirlpool Corporation)
- Possibility of brands expanding their business in the future thereby expanding the chances of reaching wider consumers. Therefore the defense that the merchandise or service is different from the merchandise or service on which the mark is already in use is now having a lesser impact, since the earlier proprietor of the mark may expand his business within the future.
Effectiveness of defence of Honest Concurrent Use in present times
Truth be told, the defence got diluted over time — primarily because of these reasons:
- the likelihood of marks acquiring transnational reputation (as was recognized by the court within the Whirlpool case)
- The penetrative impact of technology and also the media on the goodwill of the trademarked goods (Indian Shaving Products Ltd. vs. Gift Pack), which suggests brands are now more global than local
- Brand proprietors’ preference for fancy/coined trademarks and/or use of numerals within the mark, that leaves less room for confusion
- Increased diversification of well-known brands into related or disparate industries that leads courts to impose territorial limitationsupon brands pleading the honest concurrent defence, thereby restricting their operations to a particular area (s). Some fine examples are those of the Vranjilal Manilal & Co vs. Bansal Tobacco Co. (2001) and A B Textiles vs Sony Corporation (2007).
- Lastly, India’s status as a member of the world intellectual property Organization (WIPO) that works to make sure owners of registered trademarks get to shield their marks even in member countries; making the appliance of this defence harder with time.
In the face given factors it might be significantly harder for parties to use the defence of honest concurrent use, typically because that will require volumes of concrete evidence to be furnished in support of such “honest use”. And even then, the court is more likely to simply accept a ‘reasonably conscious innocent adoption’ of a mark as against ignorant or bad faith adoption of the same.
What therefore remains to be finished fledgling businesses may be a thorough trademark search, wide-ranging at the best (online and also as offline), to make sure they’re not close to adopt a mark already in use. For established businesses using their trademarks over a course of their time without having registered it, it might be prudent to apply for registration at the earliest. Every time, it’s necessary to have multiple copies of relevant documents on the side as this can act in establishing the authenticity of adequate measures taken by the concerned party and prepare it for a win, just in case of possible trademark litigation in future.