Honest and Concurrent Use of Trademark

Trademarks are essential in protecting the identity of businesses by differentiating their goods and services from others in the market. A trademark can consist of words, symbols, logos or even a combination of these elements. The primary purpose of a trademark is to serve as a source identifier for consumers, helping them distinguish between products from different companies. 

In an era of global commerce and competition, trademark protection is critical for businesses looking to maintain their market presence and avoid customer confusion. However, there are instances where two entities may use identical or strikingly similar trademarks concurrently. In such situations, the doctrine of honest and concurrent use comes into play.

The concept of honest concurrent use is a legal principle that allows two or more businesses to use the same or similar trademarks, provided that their use is honest and has existed for a considerable amount of time. This exception to the general rule prohibiting the registration of identical or similar marks is recognised under trademark laws in various jurisdictions, including India. 

What Is Honest Concurrent Use?

Honest concurrent use refers to a situation where two entities, operating independently and in good faith, use the same or similar trademarks over a period of time without intending to deceive or cause confusion among consumers. This use must be honest, meaning that neither party is attempting to take unfair advantage of the other’s reputation and must coexist for a substantial period.

In trademark law, the principle of honest concurrent use serves as an exception to the general rule that prohibits the registration of a trademark that is identical or confusingly similar to an already registered mark. This exception is recognised in several jurisdictions, allowing businesses that have been using a mark in good faith to continue using and even register that mark, despite the existence of a prior identical or similar trademark.

Laws Governing of Honest Concurrent Use of Trademark in India

In India, the concept of honest concurrent use is enshrined in Section 12 of the Trade Marks Act, 1999. This section allows for the registration of trademarks that may be identical or similar to existing registered trademarks if the applicant can prove that the use of the mark has been honest and concurrent. The discretion to allow such registration lies with the Registrar of Trademarks, who must be satisfied that the applicant’s use of the mark has been bona fide and that there is no likelihood of confusion or deception among consumers.

Section 12 of the Trade Marks Act, 1999 reads as follows:

“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, the Registrar may permit the registration by more than one proprietor of trademarks which are identical or nearly resemble each other 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.”

This provision allows the Registrar to exercise discretion in permitting the registration of identical or similar trademarks, provided that the applicant can demonstrate honest concurrent use. The applicant must also provide evidence to support their claim, such as proof of the duration of use, advertising expenditures and consumer perception of the mark.

Requirements for Honest Concurrent Use of Trademark

For an applicant to successfully claim honest concurrent use, certain legal requirements must be met. These requirements vary depending on the jurisdiction, but they generally include the following:

1. Honest Use: The applicant must demonstrate that their use of the trademark has been honest, meaning that they did not intend to deceive consumers or take unfair advantage of an existing trademark. The use should be in good faith and should not have been adopted with knowledge of the prior mark.
2. Concurrent Use: The applicant must show that their use of the trademark has been concurrent with the use of the existing trademark. This means that both parties have been using the mark simultaneously for a substantial period.
3. Good Faith: The applicant must establish that they were unaware of the existence of the prior registered trademark when they began using their mark. If the applicant knew of the prior mark and still adopted the same or a similar mark, their use may not be considered honest.
4. Consumer Association: The applicant must prove that relevant consumers associate their mark with their goods or services. This can be demonstrated through evidence of advertising, sales and market presence.
5. No Likelihood of Confusion: The applicant must show that the concurrent use of the trademarks is unlikely to cause confusion or deception among consumers. The Registrar will assess whether the coexistence of the two marks is likely to mislead the public.
6. Special Circumstances: In some cases, the applicant may need to demonstrate special circumstances that justify the concurrent use of the trademark. For example, if the applicant’s business operates in a different geographical region or caters to a different target audience, the Registrar may consider this a special circumstance.

Evidence Required for Honest Concurrent Use of Trademark

To support a claim of honest concurrent use, the applicant must provide documentary evidence to prove that their use of the trademark has been bona fide and concurrent with the existing mark. Some of the key evidence required includes:

• Proof of Usage: The applicant must provide evidence of the duration and extent of their use of the trademark. This may include documents showing when the mark was first used and how it has been used over time.
• Advertising Expenditures: The applicant must submit evidence of the funds spent on advertising and promoting the trademark. This helps demonstrate that the mark has been widely used and recognised by consumers.
• Sales Data: The applicant should provide sales figures and other financial data to show that the trademark has been used in connection with goods or services in the marketplace.
• Consumer Recognition: The applicant may also submit evidence showing that consumers associate the trademark with their business. This can include market surveys, customer testimonials and other forms of consumer feedback.

Case Laws on Honest Concurrent Use of Trademark

Over the years, several landmark judicial pronouncements have clarified the doctrine of honest concurrent use and its application in trademark law. Some of the key cases include:

1. Kores India Ltd. v. M/s Khoday Eshwarsa and Son

This case, decided under the Trade and Merchandise Marks Act, 1958, was one of the earliest cases to establish the principles governing honest concurrent use in India. The court held that the following factors must be considered when determining whether a trademark can be registered based on honest concurrent use:

• The genuineness of the concurrent use.
• The quantum of use, including the duration, area and volume of trade.
• The likelihood of confusion resulting from the similarity of the marks.
• Whether any instances of confusion have been recorded.
• The inconvenience that may be caused to the parties involved.

The court emphasised that the applicant must prove that their use of the mark has been honest and that there is no likelihood of confusion among consumers.

2. Lowenbrau AG v. Jagpin Breweries Limited

In this case, the plaintiff, Lowenbrau AG and the defendant, Jagpin Breweries Limited, were both using the term “Lowenbrau” for their beer products in India. The court found that the word “Lowenbrau” had been used by multiple beer manufacturers in Germany and had become generic. 

As a result, the court allowed the defendant to continue using the term under the defense of honest concurrent use, noting that the plaintiff had failed to take legal action for a long time.

3. London Rubber Co. Ltd. v. Durex Products

In this case, the respondent sought to register the trademark “Durex” for contraceptive products, despite the appellant having already used the same mark in India. The court ruled in favor of the respondent, allowing the registration of the trademark under the doctrine of honest concurrent use. 

The court held that the provisions of the old Trade Marks Act, 1940 allowed for the registration of similar trademarks if there was honest concurrent use, even if the marks were identical.

4. Goenka Institute of Education and Research v. Anjani Kumar Goenka

In this case, both parties used the term “Goenka” in their trademarks for educational institutions. The court found that both parties had started using the mark around the same time and in different geographical regions. As a result, the court allowed the registration of both marks, subject to certain conditions, such as requiring the appellant to include the name of their trust in brackets below the name of their institution to avoid confusion.

5. Satilila Charitable Society v. The Skyline Educational Institute

In this case, the court allowed an engineering institution to continue using the name “Skyline” despite the existence of another institution with the same name. The court reasoned that students are not ordinary customers and are likely to be well-informed about the educational institutions they choose. As a result, there was no likelihood of confusion among the student community.

Impact of Honest Concurrent Use on Trademark Law

The doctrine of honest concurrent use has a significant impact on trademark law, as it allows for the coexistence of identical or similar trademarks in certain circumstances. This doctrine recognises that in a dynamic marketplace, it is possible for businesses to adopt similar marks without any intention to deceive or confuse consumers. It provides a legal framework for resolving conflicts between trademark owners while ensuring that the rights of both parties are protected.

However, the application of the doctrine of honest concurrent use is not without its challenges. One of the primary concerns is the potential for consumer confusion, which is the very issue that trademark law seeks to prevent. The Registrar of Trademarks and the courts must carefully evaluate each case to determine whether the concurrent use of similar marks is likely to mislead consumers.

Another challenge is the burden of proof placed on the applicant. To successfully claim honest concurrent use, the applicant must provide substantial evidence to support their claim, which can be a time-consuming and costly process. Additionally, the decision to allow the registration of a trademark based on honest concurrent use is ultimately at the discretion of the Registrar, which can lead to uncertainty for businesses.

Conclusion

The doctrine of honest and concurrent use plays an important role in balancing the rights of trademark owners and promoting fairness in the marketplace. It provides a legal remedy for businesses that have been using similar marks in good faith and allows for the coexistence of trademarks in certain situations. However, the application of this doctrine requires careful consideration of the facts and circumstances of each case, particularly the likelihood of consumer confusion.

In India, Section 12 of the Trade Marks Act, 1999 provides a legal framework for honest concurrent use, allowing the Registrar to exercise discretion in permitting the registration of similar marks. The burden of proof lies with the applicant, who must provide substantial evidence to demonstrate that their use of the mark has been honest, concurrent and unlikely to cause confusion.