India is a vast market with many levels of consumers with their own purchasing power and preferences for goods and services. This scenario allows for many unregistered trademarks in small pockets as the registration of a mark is not mandatory. It is therefore possible for a two or more similar marks to be in operation at the same time.
To which mark should the law extend its protection? In fairness, both may need it.
A user of such a trademark can seek protection and claim prior user or concurrent user status.
The law of evidence lies at the centre of the matter and the trademark law is relegated to the background. In cases of honest use, concurrent registration is conducive to both trademark proprietors and is often a better outcome than a refusal of registration to one or both.
The “relative grounds” for refusal of registration under section 11 of the Trademarks Act, 1999, mandates the registrar to prohibit registration of a trademark in respect of goods or services if the trademark is identical or similar to an earlier trademark covering identical or similar goods or services and there is a likelihood of confusion on the part of public.
Section 12 of the act gives the registrar discretion to make exceptions in certain cases such as in the existence of honest concurrent users, other special circumstances and in the case of prior use (section 34).
The discretion given to the registrar is based on an inquiry into the bona fides of an applicant for registration of the mark which is identical or similar to a trademark of same or similar goods or services.
The registrar can impose such conditions and limitations as he may deem fit and proper to allow the mark to go on the register.
Where the concurrent user is not honest and where there is misrepresentation or suppression of essential facts, no honest concurrent user will be inferred to exist.
The concurrent use of a trademark has to be examined in the context of evidence regarding the length of time during which the mark was in use as well as the extent of the owner’s trade and the turnover of the business.
The concurrent user of the trademark must refer to the entire trademark sought to be registered, not just one feature of it. Evidence must relate to the use of the trademark as a whole.
The act has increased the rights of trademark holders to forestall the registration of identical or similar trademarks, not only on the same goods but also on similar goods.
Thus the sphere of concurrent registration has expanded to a considerable extent.
The registrar is also allowed to make another exception to the relative grounds of refusal to register a mark under section 11. He may allow registration of an identical or resembling trademark in respect of the same or similar goods or services in the event of special circumstances such as when the opponent has acquiesced to the use of the mark by the applicant and has taken no legal steps to prevent such use.
The registration is allowed by imposing such conditions and limitations, as the registrar may deem proper.
If a proprietor of an earlier trademark consents to registration of a similar trademark, the registration would be completed under section 12.
Concurrent registration is an exception to the prohibition of registration of similar marks contained in section 9(2)(a) and sections 11(1), 11(2) and 11(3) of the act. If a mark is objectionable for reasons other than similarity with another mark, the concurrent registration would not enable registration of the mark.
The onus of establishing that the case is fit for registration is on the applicant.
Registration on the basis of honest concurrent use is granted only if the other requisites for registration are satisfied, such as distinctive character or capacity to distinguish. In arriving at a conclusion in the registration, the registrar may consider:
- The honesty of adoption and use;
- The concurrent use of trademark shown by the applicant having regard to the duration of use, area of business and volume of trade;
- The chances of confusion resulting from the similarity of the applicant’s and opponent’s marks, from the standpoint of consumer confusion;
- Whether any concrete instances of confusion have in fact been proved; and
- The relative inconvenience which would result between the parties if the applicant’s mark is concurrently registered.
Honesty of adoption and use of a trademark is the sine qua non for considering an application under section 12 of the act.
If either the adoption or subsequent use of the trademark is proved to be dishonest, no amount of use will help the applicant.
Abhai Pandey is a lawyer with LEX ORBIS IP Practice, a firm specializing in intellectual property with offices in New Delhi.