Honest concurrent use

Honest Concurrent use is denied u/s 12 of the Trademarks Act, 1999 which says that if you are using some mark since long honestly or you have adopted the same honestly for business purposes, it means that you are also entitled to get registration for the said mark. The burden relies upon you to prove the same.

Query No. 2 - you can proceed further according the Schedule mentioned and can proceed further for registration.

Indian trademark law protects the interests of honest concurrent user, who has been using the mark prior in time to another

The law of trademarks is based mainly on two concepts of distinctiveness and deceptive similarity. If the mark of one trader so resembles another as to create confusion regarding the source of goods or services, the mark is not allowed to remain on the register. However, trademark law the world over protects the interests of honest concurrent user, who has been using the mark prior in time to another. Indian Trademarks Act 1999 under Section 12 contains this principle, whereby, at the time of registration of trademarks, the Registrar has been given the power to allow registration of a deceptively similar trademark in case of honest concurrent user, subject to certain conditions and limitations. The objective of the provision is two fold:

1. If there are similar trademarks in the market, directions can be issued to ensure that the consumers do not get confused

2. Allowing the rival traders their trademarks, as they have carried on their business with them and such marks became distinctive qua such traders. Prior use by third parties of a trademark may throw considerable light on the existence or not of an exclusive ownership claim of a party in respect of that trademark.

These principles were recently upheld by the Division Bench of the Delhi High Court at the interim injunction stage, in Goenka Institute of Education and Research v. Anjani Kumar Goenka & Anr.1, while quashing the order of Single Judge bench of the same court. It was contented by the appellants that the word ‘Goenka’ has been used as trademark even prior to the use by the respondent, who claimed exclusive rights over it in respect of their educational institutions. The appellant asserted that ‘Goenka’ being a common surname is per se not distinctive. The respondents had been using the trademark before the appellants started to and had even got the same registered in 2005. They argued that the use of the same name in respect of educational institutions would mislead the public into thinking that the services of defendant are originating from the plaintiffs. The single judge had held in favour of respondents, holding the appellants liable for passing off. It also said that the user of the third person was not relevant to the issue of ownership and allowed injunction in favour of the respondents.

The Appellate Court had to decide on the issues of:

a. Honest concurrent use 
b. The effect of others’ use of the word ‘Goenka’ in respect of educational institutions and consequent dilution of distinctiveness 
c. The name ‘Goenka’ being publici juris.

In deciding upon honest concurrent use, the court brought attention to the fact of absence of mala fide intention in adoption of the trademark. The court held that in the present case, the adoption was indeed honest. In relation to the second issue, the court remarked that there was no deceptive similarity and the two institutions were based in different cities. However, since the education of students was involved, in order to ensure that they are not lead into the belief that the two institutions spring from the same source; the court directed the appellant to take steps to add such information of disclaimer or maintain sufficient distinction between the names of schools of appellants and respondents. They were also supposed to add the name of their trust in brackets below the school name, as also on the promotional material and literature of the school and mention categorically that they were not affiliated to any other institution using the name ‘Goenka’ as a trademark or trade name. On the third issue, the court said that it could not authoritatively hold the name to have become publici juris at the interim stage on the strength of the documents placed before it. It was left open to be proved by the appellant at the trial. Neither party was held to be the first user of the trademark, so as to be able to prevent third parties from using the same.

The court also made a passing reference to Section 33 of the Act, which provides that if the prior user has acquiesced the subsequent user’s mark for a period of five years, he is precluded from bringing a suit for infringement or passing off. However, since this defence was not pleaded in this case, though the mark was in use for 8 years before institution on of the suit, the court refrained from pronouncing on the same.

As a matter of principle, an individual has the latitude of trading under its own name, as what is being done is in fact, making of a truthful statement regarding a legitimate interest preserved in the business. At the same time; it is not permitted to adopt a name as to generate a belief of connection with others’ business.

1. 2009 (40) PTC 393 (Del.)(DB)

www.ipfrontline.com/depts/article.aspx?id=23300&deptid=4

thank you...

It is possible that a trademark may be used by two persons in different places in India simultanously as India is a vast country and each of them may not be aware of the use of the mark by the other in  another part of India such as one person may use it in assam and another in kerala .Both may apply for trademark protection  The criteria  for granting trandmark for both of them is that both of them should have honestly adopted the trademark and both of them must be using them concurrently ie simultanously.If one has been using itearlier then it would not be a case coming under honest concurrent user.This provision was lenienly interpreted when the Trademarks act 1958 was brought into force by not stricly following the provision that it should be simultanously used.There are decisions of the Intellectual property appellate Board intrerpreting  the word 'honest  concurrent use'.I have given decisions on this.

T.R.Subramanian