By definition, whereby trademark is a discernible sign

(comprising of a name, word, phrase, logo, symbol, design, et al

or a combination of one or more of these elements), used
primarily for the purposes of identifying the goods/services of
one trader from those of others in the market; it can come as no
less than a blow to trademark proprietors that an identical or
similar mark can exist in respect of the same or similar goods
or services.

Trademark litigation is rarely linear — and has a plethora

of defences defendants can make use of to evade getting tangled
in a trademark infringement battle. “Honest concurrent
use”, as laid down under section 12 of the Trade Marks Act,
1999, is one of those grounds prescribed under which identical
or similar marks by more than one proprietor and in relation to
same or similar goods/services may be permitted registration
by the Registrar, based upon his subjective discretion. The
section also makes mention of “other special circumstances” in
addition to the honest concurrent defense.

A plain, cursory reading of the law evidently hints that the

Registrar is in no way obliged to register the disputed mark, and
that much relies on how the applicant/defendant goes about
proving honest and concurrent use of the contesting mark.

A Brief Background of the law of ‘Honest

Concurrent Use’ and its Evolution
Two of the earliest cases (of the 1860s) in this context are
known to have led to the emergence of the above rule, those
being, Dent vs. Turpin and Southorn vs. Reynolds.

Subsequently, in the English case John Fitton & Co. [(1949)

66 RPC 110,112], five factors were laid down as conditions
necessary to be fulfilled in order to lend credence to the honest
concurrent user defense:

*The extent of use pertaining to the duration,

quantity, area of the trade

* The degree of confusion likely to result from

the resemblance of the marks, which is to a
great extent indicative of the measure of public
inconvenience

*The honesty of the concurrent use

* Whether there exists factual proof of such

instances of confusion having occurred

*The relative inconvenience, which would be

caused if the marks were registered, subject if
necessary to any conditions and limitations.
Conversely, in India, the law of honest concurrent use was first
laid down in Kores (India) Ltd. vs. M/s Khoday
Eshwarsa and Son [(1984) Arb LR 213 (Bom)], whereby,
upon a reading of corresponding section 12 (3) of the Trade and
Merchandise Marks Act, 1958, five factors were laid down
(similar to the ones detailed above) as being necessary for
determining the registrability of a trademark.

These rules later went on to being discussed and applied in

numerous cases for determining the validity of the defence of
the honest concurrent use — those being — the 1997 case
of S.Mehar Singh vs. M.L.Gupta & Co., and the landmark
case of Champagne Moet & Chandon vs Union Of India
& Ors. in 2011.

In recent times, the doctrine of honest concurrent use has been

expounded on in other cases as well. For example, in the case
of Dr. Reddy’s Laboratories Ltd. vs. Reddy
Pharmaceuticals Ltd. (2004) where the dispute between
the parties was with regard to the mark ‘Dr. Reddy’ reach a
conclusion after the IPAB ordered for removal of ‘Reddy’ of the
New-Delhi based respondent Reddy Pharmaceuticals Ltd.

This order was passed on the grounds that the mark ‘Reddy’ was
bound to lead to material confusion and mislead consumers in
the market, more so, since the latter company too dealt with
marketing pharmaceutical drugs and medicinal formulations,
an activity uncannily similar to that of the Hyderabad-based
Reddy Laboratories. Further, in this regard, the defence
of honest concurrent use too was struck down by the IPAB
that noted that of the two parties, the applicant, Reddy
Laboratories was the first to apply for the mark, and that the
respondent could not justify use of the mark ‘Reddy’ despite
being aware of the goodwill and reputation it had acquired over
the years, thereby rendering its actions dishonest and deceptive.
This aligns with the view taken in old English cases such
as Parkington & Co Ltd’s Application [(1946) 63 RPC 171]
and Cohen v Fidler & Co [(1916) 33 RPC 129].

Interestingly, the doctrine has come into the thick of discussion

in recent cases like ITM Trust & Ors. vs. Educate India
Society (2014) where registrability of the acronym ‘ITM’ was
debated, with the same being dismissed on the ground that
there seems to be no evidence of use of the acronym as a
trademark since the date of prior use claimed, and that the
defendant moved to register the mark only in 2010, much later
than the plaintiff, which suggests the use could not have been
“honest”. So the verdict lay in quite simple terms —
acronyms can indeed be registered as trademarks, but do
not ipso facto become so. They need to bear the characteristics
of a mark/logo while being actively used as a trade mark to take
advantage of this doctrine.

While most of the above mentioned cases spell more negatives

than positives, it may be noted that the defence of honest
concurrent use has indeed been permitted by the courts, as can
be seen in the case of Goenka Institute of Education and
Research vs. Anjani Kumar Goenka and Anr.
(2009), with minor directions to the appellant party to insert
the name of their trust (since the mark “Goenka” formed part of
the said trust name) below the name of their school so as to
facilitate a clear differentiation between the two marks. What
went in the appellant’s favour in this case was also the fact that
the party had started using the word “Goenka” around the same
time as the other party, and was based in a location different
than that of the respondent.

Same was the case for Satilila Charitable Society vs.

Skyline Educational Institute, where the name ‘Skyline’
was permitted to be used with respect to an engineering
institution of one party, despite the same name being used for a
school run by the other party. This was primarily decided
on public interest grounds, with the Court opining that students
are sufficiently aware of the merits of educational institutions
they would like to enrol in, and this was not likely to create any
confusion among students.

Needless to mention, there are no clear parameters drawn while

judging the stand taken by the Courts in this regard since most
decisions seem to be have been taken on a case to case basis.

How effective, then, is the defense of Honest

Concurrent Use in present times?

Truth be told, the defense has got diluted over time — primarily
due to these reasons:
· The possibility of marks acquiring transnational reputation (as
was recognized by the court in the Whirlpool case)

· The penetrative impact of technology and the media on the

goodwill of the trademarked goods (Indian Shaving
Products Ltd. vs. Gift Pack), which means brands are now
more global than local

· Brand proprietors’ preference for fancy/coined trademarks

and/or use of numerals in the mark, that leaves less room for
confusion

· Increased diversification of well-known brands into related or

disparate industries that leads courts to impose territorial
limitation upon brands pleading the honest concurrent defence,
thereby restricting their operations to a specific area (s). Some
fine examples are those of the Vranjilal Manilal & Co vs.
Bansal Tobacco Co. (2001) and A B Textiles vs Sony
Corporation (2007).

· Lastly, India’s status as a member of the World Intellectual

Property Organization (WIPO) that works to ensure owners of
registered trademarks get to protect their marks even in
member countries; making the application of this defence
harder with time.

In the face of these factors it would be significantly harder for

parties to apply the defence of honest concurrent use, typically
because, this will require volumes of concrete evidence to be
furnished in support of such “honest use”. And even then, the
court is more likely to accept a ‘reasonably conscious innocent
adoption’ of a mark as against ignorant or bad faith adoption of
the same.

What therefore, remains to be done for fledgling businesses is

a thorough trademark search, wide-ranging at best
(online as well as offline), to ensure they are not about to adopt
a mark already in use. For established businesses using their
trademarks over a course of time without having registered it,
it would be prudent to apply for registration at the earliest. At
all times, it is necessary to keep multiple copies of relevant
documents on the side — as this will act in establishing
authenticity of adequate measures taken by the concerned
party and prepare it for a win, in case of possible trademark
litigation in future.

As rightly inferred, it can be seen that the best time to

use the defence of honest concurrent times in present
times — is none. Avoiding reliance on it will score better in
your favor than making it the backbone of your ignorance.