Honest Concurrent Use In Trade Mark Law

The following is a humble attempt. I had a discussion over 'honest concurrent use', some weeks ago. Eashan's efforts are an added weapon. This is what evolved.

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Section 12 of The Trade Marks Act, 1999

"Registration in the case of honest concurrent use, etc. – 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 trade marks which are identical or similar (whether any such trade mark 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."

The idea, in a 'battle'^[1] between two trademarks that are similar or nearly resemble each other in 'name' and/or 'category', or are identical, both may win, if legitimate existence and a 'registration' is 'enough victory'^[2], cannot always be understood by an ordinary man. But such an achievement is not unheard of. Section 12 permits a trademark rights-holder to secure a registration, despite an existing registration, if the rights-holder can demonstrate honest concurrent use.^[3] It would be helpful if a commercial use is over a considerable duration of time indicating the volume of sale is more than marginal. It must be remembered, to be a mere concurrent user is not sufficient. The user must be honest, as well. To be tainted from inception, would make attempt of purification near impossible.^[4] The achievement of two victorious identical trademarks, one legitimately existing and registered already, may also be caused by 'special circumstances' other than honest concurrent use.^[5] It may simply be the consent of the registered proprietor of the earlier trade mark. The defence of 'special circumstances' usually explains hindrance in concurrent usage as an event caused by external forces beyond the rights-holder's control and for which the rights-holder is not responsible anyway.^[6]

Illustratively, 'special circumstances' have come to subsume a variety of force majeure-like conditions, including prohibitions, bans, trade control policies, statutory restrictions and economic impracticability. The question of what constitutes 'special circumstances' to excuse a lack of use by an honest concurrent user is complicated. The core of its answer may lie as far afield as the rectification provisions under Section 47(3) of The Trade Marks Act, 1999. Prior to Kabushiki Kaisha Toshiba v. Tosiba Appliances, 2008 (37) PTC 394 (SC) in May 2008, the Supreme Court, notably in American Home Products^[7], Cycle Corp^[8] and Hardie Trading^[9], had briefly considered Section 47(3). These Judgments confirmed two elements to its interpretation. First, a registered proprietor must establish that its non-use owed itself to special circumstances only, 'and not to any intention to abandon or not to use the trade mark'. Second, the burden to demonstrate the applicability of any of the special circumstances would be on the person availing that defence, i.e., the registered proprietor. Section 47(3) has since come under scrutiny by various Courts^[10], but its application has been scant. This is understandable, given the detailed nature of its factual requirements and stark consequence of liberating a registered proprietor from having to establish use of its trade mark over long periods of time.

Note: The principle of honest concurrent use is broader than merely the parts of The Trade Marks Act, 1999 that employ the words 'honest concurrent use'…