Section 12 of the Indian Trade Marks Act, 1999 takes about “Registration in the case of honest concurrent use, etc”. Section 12 provides for registration of same or similar trademarks by more than one proprietor in the case of honest concurrent use or other special circumstances. The provision establishes the superiority of trade mark rights acquired by use.
Concurrent use by two or more persons of the same trademark for the same goods is contrary to the whole essence of trademark jurisprudence, for a trade mark is intended to denote that the goods come from one source and one source only. However, exceptional circumstances arise when more than one person honestly and independently adopts the same or similar mark and continue to use without objection and without knowledge of each other’s marks, often in different territories, and without causing any confusion or deception to the public. It is considered just and natural to confer the benefit of registration to such concurrent users, even if it causes some occasional confusion.
Section 12 permits the registration by more than one proprietor of identical or similar trademarks in respect of same or similar goods or services. It is an exception to the prohibition of registration of similar marks and it overrides the generality of prohibitions contained in Sections 9 and 11 of the said Act.
The power of granting concurrent registration under Section 12 is discretionary. This is clear from the use of the words “the Registrar may permit registration”.
Case Law: John Fitton and Co. Ltd., (1949) 66 RPC 110
In this case, following five factors were laid down in order to have success in honest and concurrent user defense:
- The extent of use in time and quantity and the area of the trade
- The degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience
- The honesty of the concurrent use
- Whether any instances of confusion have in fact been proved, and
- The relative inconvenience which would because if the mark were registered, subject if necessary to any conditions and limitations.
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