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Concept of Honest Concurrent User of Trademarks

Article By Jyoti Lakhoria

INTRODUCTION

An Honest Concurrent use of a Trademark is when two different entities have coexisted for a considerable amount of time while truthfully using the same or a strikingly similar depiction of the same registered name or mark, this is known as an Honest Concurrent Use of a Trademark.

The Trademarks Act of 1999 permits the registration of marks and/or names that are identical or strikingly similar to one another, as long as the registrar is satisfied that the infringement is the consequence of a unique circumstance rather than a regular case. This is made possible by the concept of honest concurrent use, which serves as a barrier of protection for those entities that have been using such marks and/or names honestly.

EXISTENCE OF SIMILAR MARKS LEADS TO CONFUSION

Every time a product resembles another or similar to the one already in the market, there’s a chance that it may cause confusion among consumers. Therefore, it might raise the chances of confusion amongst the public at large. Nonetheless, there are other situations in which confusing similarities between trademarks cause this kind of misunderstanding. Consequently, the Registrar is required to ascertain whether a particular Trademark is likely to cause confusion or deception based on the circumstances of the case.

DEFENCE OF HONEST CONCURRENT USER

A trademark must be registered with the Registrar of Trademarks to receive protection under the Trademarks Act, 1999. Upon filing an application for registration, the Registrar may object the said application on the bases of Absolute Grounds or Relative Grounds. While Section 11 of the Act establishes relative grounds for trademark registration refusal, Section 9 of the Act controls absolute grounds for registration refusal.

In essence, Section 11 forbids the registration of a marks that are identical to one that has already been registered. The applicant may raise several defences if the registration is challenged under Section 11 of the Act. As stated in Section 12 [1] of the Trademarks Act, 1999 the applicant may raise one of the defences listed therein to avoid being embroiled in a dispute over trademark infringement.

Concurrent use is when similar mark is applied for the similar goods and non-similar goods. The applicant must demonstrate either that he has been using the mark in good faith or that he was unaware of the prior registered trademark to establish honest concurrent use. Additionally, it is the applicant’s responsibility to demonstrate that relevant customers connect their mark to their good or service.

 EVIDENCE OF CONCURRENT USE

Additionally, the clause states that the Registrar of Trademarks is under no obligation to register a particular trademark; rather, registration of such a mark is at the Registrar’s subjective discretion. Below are the documents which are requires to prove concurrent use:

  • Proof of the mark’s term of usage if it is already in use.
  • Proof of the advertisements of the mark and documentation of the money used for the advertisements.
  • Additionally, books of accounts displaying the annual sales data for the goods and services provided under the mark may be submitted by the applicant.

In Kores India Ltd. v. M/s Khoday Eshwarsa and Son[2], the rule governing “honest concurrent use” was initially established in respect to Section 12 Clause 3 of the Trade and Merchandise Marks Act 1958. It was decided that to qualify a trademark for registration under the provision, the following information must be considered:

  • The sincerity of the simultaneous usage
  • The extent to which the applicant has used the trademark concurrently, considering the items in question, the volume, area, and length of trade.
  • The likelihood of confusion arising from the resemblance trademarks, as a gauge of public discomfort or interest.

CONCLUSION

In conclusion, either the applicant or the defendant must present convincing proof to support their assertions of widespread, truthful, and concurrent use of the mark following the receipt of an opposition or similarity objection. Due to the conceptual resemblance of the marks, extensive, truthful, and concurrent use of the contested mark reduces rather than eliminates the possibility of customer confusion.

A trademark’s main function is to serve as a source finder. If two marks that are identical or confusingly similar may coexist without causing confusion for the public, the mark may be registered, at the registrar’s discretion.

[1] 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.
[2] 1985 (1) BomCR 423
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