What is Honest Concurrent Use?
Concurrent use means when any proprietor has applied for similar mark for similar or dissimilar goods to already existing mark whether registered or not. An honest concurrent use of a trademark occurs when two separate entities have been using the same or a very similar trademark for a long period, without intent to deceive, and have coexisted without causing confusion, even though the mark is registered.
To establish that the concurrent use of the mark is honest and bona fide, the applicant must prove that he was unaware of the existing similar mark and provide necessary documents in support related to the mark and goods in which they are dealing. The adoption and use of the mark must be in good faith, where both party is attempting to take unfair advantage of the reputation and goodwill of the other and they have been coexisting in the market for a long period of time.
Exception to Section 11 of the Trademark Act, 1999
Section 11 prohibits the registration of a mark that is similar or identical to an already existing trademark, which deceives or creates confusion amongst the general public.
To challenge this ground of refusal, there is an exception provided under Section 12, which explains 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."
Requirements of an Honest Concurrent UserThe applicant must confirm that their use of the trademark is honest, which means that they did not aim to mislead consumers or unfairly take advantage of an existing trademark. The use should be made in good faith and without knowledge of the prior mark. The applicant must prove that the trademark they are using is concurrent to the use of the existing trademark. This applies to the situation where both the proprietors are using the similar mark simultaneously for a long period of time. The applicant must substantiate that they are using the mark in good faith, i.e., they were not aware about the existence of the similar mark, whether registered or not. If the applicant was aware of the prior mark and chose to use a similar or identical mark, their use may not be regarded as genuine. The applicant must show that the relevant consumers connect their mark with their products or services. This proof can be supported by evidence such as advertising, sales, and market presence. The applicant must establish that the simultaneous use of the trademarks is unlikely to lead to confusion or deception among consumers. The Registrar will evaluate whether the coexistence of both marks could mislead the public.
In the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another, (2009) 160 DLT 417, the Delhi High Court held that "the doctrine of honest concurrent use is divided into two parts; the first is that there must be honest adoption, and the second part is that there is the concurrent use of the trademark with another existing trademark. There is a third feature that can be applied for this doctrine, i.e., the Registrar can impose some conditions and limitations while permitting the registration of the similar or identical trademark that fulfills the condition of honest concurrent use."
Conclusion
The doctrine of honest and concurrent use is crucial in striking a balance between trademark owners' rights and ensuring fairness in the marketplace. It offers a legal solution for businesses that have been using similar trademarks in good faith, allowing for their coexistence in certain circumstances. This doctrine has broadened the scope of trademark registrations by allowing registration of those marks that are adopted in a bona fide manner without causing harm to the reputation of the existing trademark. However, applying this doctrine necessitates a thorough evaluation of each case's specific facts and circumstances, especially regarding the potential for consumer confusion.
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