The main contention to prove the honest concurrent use is that the applicant has been using the mark in good faith and/or he didn’t have the knowledge of the earlier registered trademark and thereafter explains the legal requirements to prove the claim of the bonafide user of the trademark.
Introduction
A Trademark which is similar to an already registered trademark would not be recognized. According to Section 11 of the Trade Marks Act, 1999,
a trademark shall not be registered if it is similar to a registered trademark. This provision is there to prevent confusion among the consumers as to the ownership or origin of the goods claimed.
For a trademark to get protection under the Trade Marks Act, 1999, it has to be registered with the Registrar of Trade Mark. Section 12 of the Trade Marks Act, 1999 provides for registration of a trademark in case of honest and concurrent use depending upon the subjective discretion of the Registrar.
The burden of proof under the evidentiary aspect of trademark law says that an applicant needs to establish prima facie contentions that there is no such person using an identical or similar mark, as it is not possible to show conclusively that there is no such person. The registrar may take notice of a state of affairs that would enable it to raise a presumption that according to “the common course of natural events, human conduct, and public and private business” such a situation does not exist. However, if an objection is raised such a presumption would not be raised. Then the burden is on the objecting person to prove his case in accordance with the principle of section 101 of the Evidence Act, 1872 and he must also prove that the registration of the mark would be of material detriment to him. In Concurrent registration of identical or similar marks, heavy burden lies on the applicant to prove the existence of the following conditions, the findings on which are necessarily subjective in nature.
Various Jurisdiction
The quantum of the concurrent use of the trademark in connection with the goods concerned and the duration, area and volume of the trade.
The degree of confusion likely to ensue from the resemblance of the marks, which is to an indication of the measure of public inconvenience.
The honesty of the concurrent use Whether any instances of confusion have in fact been proved. The relative inconvenience, which would be caused if the marks were registered, subject if necessary to any conditions and limitations.
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 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 , 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 Dr. Reddy’s Laboratories Ltd v M/s. Reddy Pharmaceutical Limited ‘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.
English Law
Quite often a business is advised that a certain trade mark that it wishes to register, or a confusingly similar version of it is already registered in a third party’s name. The trade mark attorneys acting for the business will then, as a matter of course, request details of the use of the mark, if any, What is the significance of this enquiry? The answer lies in section 14(1) of the Trade Marks Act 194 of 1993. It aunty that a mark can be registered, despite its conflict, among other things, with a registered mark, in the case of honest concurrent use, OE o other special circumstances that may make it proper to do so. The obvious INsue that requires attention is the meaning of the concept honest.
Relevant factor under English law were set out in the decision of Piries Application (19331 RPC 147. These include • contingencies of confusion the duration of use, • whether the choice of the mark was honestly made, • the nature of the trades of the respective purtics, and actual confusion.
In the application of these factors, the hardship Involved in refusing registration must also be considered. In practice, the most controversial aspect is probably whether the knowledge vain of a mark excludes protection. The impact of knowledge of a mark featured in Massachusetts at Work 1918 KPC 137, also a British decision. In this matter it was stated that tugh it had been suggested that the use had been other than honest, this use had taken place with full knowledge of the mark.
Registration was thus refused
In George Ballantine & Son Lule Ballantyne Stewart & Coy td|1959) RPC 47, it was said that use was in good faith in Latin, bona fide) if the user was someone ignorant of the conditions in the market and of the state of the register. In the light of such knowledge, the adoption of the mark was held not to be in good faith.
The ruling would also support the inference that knowledge of a mark amounts to an exclusion of good faith. However, in the authoritative Pirie decision, it was held that knowledge of a mark loses its significance once the selection of the mark is property explained.
Conclusion
To conclude, when claiming honest concurrent use after receipt of a similarity objection or opposition, the applicant or the defendant should produce strong evidence to substantiate such claims of extensive, honest and concurrent use of the trademark. Extensive, honest and concurrent use of the disputed mark does not negate but mitigates the likelihood of consumer confusion due to the conceptual similarity of the marks. The primary objective of a Trade Mark is to act as a source identifier, and if two identical or similar marks can exist without any public confusion then the mark can be registered subject to the subjective discretion of the Registrar.