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SAME TRADEMARK USE BY ONE OR MORE PERSON – RESEARCH ON
SECTION 12 TRADEMARK ACT

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.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.

Kores (India) Ltd v M/s Khoday Eshwarsa and Son1

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.

1
Kores (India) Ltd v M/s Khoday Eshwarsa and Son, 1984(2)ArbLR213(Bom)

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Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr2

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.

Genka Institute of Education and Research v. Anjani Kumar Goenka and Another 3

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.

Satilila Charitable Society v Skyline Educational Institute4

an engineering 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
2
 Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr , 2009BusLR360(Del)
3
Genka Institute of Education and Research v. Anjani Kumar Goenka and Another  AIR2009Delhi139
4
 Satilila Charitable Society v Skyline Educational Institute 2005(30)PTC561(Del)

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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.

Dr. Reddy's Laboratories Ltd v M/s. Reddy Pharmaceutical Limited 5

‘Dr. Reddy' was a mark adopted and u sed 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.

5
Dr. Reddy's Laboratories Ltd v M/s. Reddy Pharmaceutical Limited 2014(57)PTC372(IPAB)

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