Honest And Concurrent Use of Trademark
In most jurisdictions, Trade Mark law provides for a Trade Mark of an honest and concurrent user to co exist with another similar mark. The defence of honest and concurrant user was conceived mainly through two cases. Firstly, the case of Dent v Turpin i determined that two users of a mark (which had derived from a common predecessor) had a separate right to obtainan injunction against a third person using the mark. Secondly, in Southorn v Reynolds ii , the Dent case was relied on to come to a conclusion on very similar facts. Though, it should be noted that neither of these two cases was related to dispute between concurrent users. The courts, in these two cases were not protecting the exclusive property rights but restraining a person from misrepresenting his goods as those of another.
In John Fitton & Co, following five factors were laid down in order to have success in honest and concurrent user defense:
1. The extent of use in time and quantity and the area of the trade
2. The degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience
3. The honesty of the concurrent use
4. Whether any instances of confusion have infact been proved, and
5. The relative inconvenience which would because if the mark were registered, subject if necessary to any conditions and limitations.
In India, Section 12 of the TM Act provides for registration of a trademark in case of its honest concurrent use by providing that ‘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 trademarks which are identical or similar (whether any such trademark 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'. So, it is clear that the Registrar is not obliged to register such an honest concurrent user; rather it depends upon his subjective discretion.
The law pertaining to honest concurrent use was laid down in Kores (India) Ltd v M/s Khoday Eshwarsa and Son iv in relation to Section 12(3) of the Trade and Merchandise Marks Act, 1958 . It was held that the following facts are required to be taken notice of, while determining the registrability of a trademark under the said provision:
1. The honesty of the concurrent use
2. The quantum of concurrent use of trademark shown by the petitioners having regard to the duration, area and volume of trade and to the goods concerned
3. The chances of confusion resulting from the similarity of the applicant's and opponent's trademarks, as a measure of the public interest or public inconvenience
4. Whether any instances of confusion have infact been proved, and
5. The relative inconvenience that may becaused to the parties concerned.
In Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr, iii the plaintiffs Lowenbrau AG and the defendants Lowenbrau Buttenheim, both incorporated in Germany were involved in the dispute over the usage of the word ‘Lowenbrau' for their beer in India. The Court made the observation that the word ‘Lowenbrau' means ‘lion's drink' and had also been used by many other beer manufacturers in Germany for a substantial time, thereby making the word synonymous with beer of German origin and source. Further, the plaintiffs did not take any legal action against the defendants for a long time as both of them were involved in their business in other countries as well. It was a perfect case of the word ‘Lowenbrau' having become public juris or a generic word. After taking into consideration the high volume of sales of defendants'products, the Court did not find merit in grant of injunction in favour of the plaintiffs and thus, allowed the defense of honest concurrent user in favour of defendants along with damages to the tune of Rs 20,000.
In London Rubber Co. Ltd v. Durex Products vi the respondent made an application before the Deputy Registrar of Trade Marks for registering the mark, "Durex" used by it on the packing of the contraceptives manufactured and marketed by it. The registration was disputed by the appellant on the ground that it has been using the trademark "Durex" in India since the year 1932 and its registration was renewed in the year 1954, for a period of 15 years. The Deputy Registrar of Trade Marks over ruled the objection and admitted the mark "Darex" to registration as sought by the respondent. An appeal preferred to the High Court against this order was also dismissed. The appellant's main contention in this court was that as them arks are identical, the registration had to be refused under s. 8 (a) of the Act, the provisions of which are notsubject to the provisions of s. 10 (2). Further, the requirements of s. 10 (2) were not satisfied in this case and its provisions were not applicable. The Supreme Court held that Section 10(2) of the Trade Marks Act, 1940 (corresponding to Section 12(3) of the Trade and Merchandise Marks Act, 1958) permitted the Registrar "to admit registration of marks which are identical or nearly resemble one another in respect of the same goods or description of goods provided he is of the opinion that it is proper to do so because there was honest concurrent use of the mark by more than one Proprietor or because of the existence of special circumstances." The Supreme Court further held in the said case that the provisions of Section 10(2) (of the old Act), were by way of exception to the prohibitory provisionscontained in the Act and hence they over ride the provisions of Section 8(a) and 10(1) of the old Act. It was also held in the same judgment that even the volume of honest concurrent use is of no significance and "even a small trader is entitled to protection of his trade mark if there is honest concurrent use". But the Registrar as well as the learned Judge did not go into detail in respect of the claim made by the appellants regarding honest concurrent use, with reference to any of these salient features.
In Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another vii , both the applicant and respondent had “Goenka” as a predominant part of their trademarks: the competing marks were “Goenka Public School” and “G.D. Goenka Public School”. Honest and concurrent use was established because of the following facts: first, it was established that both parties started using the word “Goenka” around the same time, secondly, one institution was based in Delhi and the other in Rajasthan so the appellant could not have known of the respondent's mark when he started using the same and thirdly, the fact that Goenka forms part of the appellant's trust name, all pointed to honest and concurrent adoption. Therefore, the Registrar allowed both marks to be registered with certain conditions, such as, the appellant was directed to insert the name of their trust in brackets below the name of their school in order to clarify and differentiate between the two marks.
Similarly, in the case of Satilila Charitable Society v Skyline Educational Institute viii , anengineering institution in the name of ‘Skyline' was allowed to be continued despite the existence of ‘Skyline' business school of the other party. The Court held the following: “To say the least, the present litigation is to have more commerce in education and less education in commerce. Private commercial houses by advertising fancy name of foreign universities lure student in this country. All this exercise is not in realm of imparting education but knowing fullywell that in India the name of a foreign university is lucrative enough to get larger chunk of moneyfrom the pockets of the parents.” The Court said that a student who would like to go to an educational institution is not a lay customer. If he/she prefers to go to a specific college, say, St Stephens Collegen or Hindu College in Delhi, he will go to these colleges and not to others although there may be other colleges with similar names. The Court was thus 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.
In Dr. Reddy's Laboratories Ltd v M/s. Reddy Pharmaceutical Limited ix ‘Dr. Reddy' was a mark adopted and used by Dr. Reddy Laboratories since 1984 and has acquired reputation and goodwill. However, application for registration of this mark was filed only in 2001 under various classes. Reddy Pharmaceuticals Limited, the respondent, was the agent of Dr. Reddy Laboratories for 10 years. This association was terminated on 1st April 2003 and on 17th April 2003 the respondent filed the impugned trademark application for the mark ‘Reddy'. Though the respondent's application was filed subsequent to the applicant's application, the mark was registered in favour of the respondent in 2005 under ‘medicinal and pharmaceutical preparations'. The IPAB observed that the applicant was the first to apply for the mark in 2001 and the respondent's application was subsequent to the applicant's in 2003. Therefore, the registry erred in accepting the respondent's subsequent application. The IPAB remarked “The applicant company headed by a scientist/technocrat have indulged in benign neglect of not seeking timely protection for their brand name and are now ruing its decision.” The IPAB further stated “It is true law recognizes and preserves the right which every man has to use his own name including for carrying on trade or business provided such use is not fraudulent.” In the present case it was held that all the facts point towards the fact that the respondent deliberately adopted the impugned mark to deceive the public. It was not a bona fide user and therefore the respondent could not take support of honest and concurrent use under S. 12.
i (1861) 2 J & H 139 (70) ER 1003
ii (1865) 12 LT 75,
iii (1949) 66 RPC 110, 112 (Reg)
iv (1984)Arb LR 213 (Bom)
v .I A Nos 11355/2007 and 13772/2007 in CS(OS) No 1810of2007, Delhi High Court (14 January 2009).
vi 1963 AIR 1882, 1964 SCR (2) 211
vii FAO (OS) No. 118/2009
viii FAO 213/2003 and FAO (OS) 212/2003, 6 October 2004,Delhi High Court.
ix IPAB ORDER 232/2013