Concurrence in Trade mark usage- Concern, not for the Honest

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1 2014] F-35 Concurrence in Trade mark usage- Concern, not for the Honest Kanisshka Tyagi* and Isha Mehta** The article analyses the provisions relating to the concurrent use of one Trade mark by two or more persons. If the usage of a Trade mark by one or more parties is honest or falls in case of some other special circumstances, then the Registrar of Trade mark may allow the registration of such a Trade mark, by the virtue of Section 12 of the Trade mark Act, The application of this Section [section 12] has been explained in the following article. The provision laid down by Section 12 has been extensively discussed, with supporting case laws and how the applicability of Section 11 of the Trade marks Act, 1999 is superseded by Section 12 of the Act, has also been explained. Section 11 of The Trade mark Act, 1999 ( Act ) contains a general rule of the law of registration of Trade mark i.e. a Trade mark cannot be permitted to be registered if it is either identical or similar to an earlier Trade mark and due to such identity or similarity is likely to cause confusion in the minds of general public as to its association in some way or the other with the earlier Trade mark. An exception to this general rule as contained in Section 11 of the Act has been carved out in form of Section 12 of the said Act which lends protection to cases of bonafide concurrent usage of same Trade mark by more than one user. There may be situations wherein, the Trade mark user, who is falsely made liable for passing off, that he had all the honest intentions for such use. Therefore the provisions as laid down by the Trade mark Act, 1999 also protect such Trade marks that are similar or identical to that of another proprietor or proprietors in the case of an honest concurrent use or some other special circumstances. It is a conspicuous point that cannot go unnoticed, while understanding and reading Section 11 of the Act. Section 11 begins its text stating that save as provided by Section 12 (of the Act); which means that the provision for relative grounds for refusal of registration is superseded by the provision of registration of a similar or idential mark in case of honest concurrent use which has been provided for under Section 12 of the Trade marks Act, If more than one proprietor applies for registration of identical or similar marks in case of honest concurrent user and in other special * Kanisshka Tyagi is partner with corporate and commercial firm Kaden Boriss. The author can be reached at kanisshkatyagi@gmail.com ** Isha Mehta is presently pursuing her final year of five year law course from UILS, Panjab. The author can be reached at imehta.777@gmail.com 115

2 F-36 Manupatra Intellectual Property Reports (MIPR) [Vol. 1 circumstances, the grant will be provided under Section 12 of the Trade marks Act. 1 Section 12 of the Act lays down that in the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar of Trade mark, 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. This provision over rides the stipulation contained in Section 11(1) of the Act. The intention of the legislature here is that the court be able to weigh and measure all the possibilities of deception or confusion in the minds of the consumers/ public at large with respect to Trade mark registration in consideration of commercial claims. There are certain factors that ought to be considered while granting registration to such a disputed Trade mark, that needs to be observed by the Registrar and based on these the Trade mark in question will be registered in favour of the concurrent user. The relevant factors that are to be taken in to account in order to asses whether a case of honest concurrent use is made out or not and whether the said honest concurrent use justifies grant of registration of Trade mark under the said exception were laid down by the pronouncement in a decision of House of Lords by lord Tomlin via the Pirrie s application 2 and are summarised herein below- 1. The extent of concurrent use, quantity and the area of trade 2. 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 3. Honesty of the concurrent use 4. Whether any instances of confusion have been proved 5. Relative inconvenience which would be caused if the mark in suit was registered, subject, if necessary, to any conditions and limitations 3 It is extremely important for the Applicant to make it clear that the mark is being used with all honesty and that the Applicant had no idea before the objection is raised that his mark is similar to that of the objecting party's mark It is extremely important for the Applicant to make it clear that the mark is being used with all honesty and that the Applicant had no idea before the objection is raised that his mark is similar to that of the objecting party s mark. The term honest would mean commercially honest. Commercial honesty alone forms the grounds of the honesty referred to concurrent honesty in this section, no statutory or any other honesty has been referred to herein. 4 1 Alkem Laboratories Ltd. v. Mega International (P) Ltd. 2 Pirie s Appl., (1933) 50 RPC Law of trade marks & Geographical Indications, Wadhwa & Co., Nagpur, India, First Edition, J.R. Parkinton & Co. Ltd application, UK 116

3 2014] Concurrence in Trade mark usage- Concern, not for the Honest F-37 Section 12 further enacts that in cases of honest concurrent use or of other special circumstances, it may be proper to permit the registration notwithstanding that marks used by the two parties are identical. The term other circumstances would comprehend any other circumstance except an honest concurrent use. This permits the registration of the same mark by two different persons. The scope of this Section has been made wider by adding the words and in special circumstances. This has been done so that there is enough room for accepting and adjusting all the Trade mark applications, which are bona fide and no reason for not registering that Trade mark seems justified. Any circumstance, which is peculiar to the subject matter of the application for Trade mark registration. Registrar, while making any decision in this regard, has to exercise extra caution and has discretion to register a particular Trade mark only in those discerning few cases wherein, it may be discovered that the parties had total bona fide intention while using the Trade mark which were similar to each other. 5 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. In Sudheer Bahl v. M/S. Khyber Restaurant and The Deputy Registrar of Trade marks 6 the ratio decidendi was, If Applicant has obtained registration of Trade mark by wrong statement of use, and then such mark shall go out of register. It was explained via the judgement in the instant case that in case the concurrent use of the Trade mark of the challenged party is dishonest by any ways, and even if the slightest doubt happens to be prevalent, then in such a case, the registrar will reject the registration of such a Trade mark and will not entertain any such application under Section 12. The onus of proving the innocence lies with the party that has been challenged for the use of Trade mark similar to that of the objecting party. The situation is though pretty clear in the Indian law, yet a brief mention of the United States mechanism of concurrent use and its way out could help understanding the larger aspects of this privileged provision and its importance. An honest concurrent registration of the same Trade mark to two or more unrelated parties, with each party having a registration limited to a distinct geographic area in United States, has a clear place in the American legal system. Such a registration is achieved by filing a concurrent use application (or by converting an existing application to a concurrent use application) and then prevailing in a concurrent use proceeding before the Trade mark Trial and Appeal Board which is also known as the TTAB. The Trade mark Trial and Appeal Board is a judicial body within the United States Patent and Trade mark Office (USPTO). A concurrent use application may be filed with respect to a Trade mark which is already registered or otherwise in use by another party, but may be allowed to go forward based on the assertion that the existing use can co-exist with the new registration without causing consumer confusion. The authority for such category of registration is set forth in the Lanham Act, which permits concurrent use registration where the concurrent use Applicant made a good-faith adoption of the mark prior to the registrant filing an application for registration. Such registrations are most commonly achieved by agreement of the parties involved, although the USPTO must still 5 Consolidated Foods Corporation v. Brandon co. AIR [1965] Bom MANU/IC/0098/

4 F-38 Manupatra Intellectual Property Reports (MIPR) [Vol. 1 The Lanham Act vocally stresses on the requirement of the director to object on the registration of such a mark in case of any doubt with regard to any confusion, mistake or deception which may arise in case of such a registration determine that no confusion will be caused. The Lanham Act vocally stresses on the requirement of the director to object on the registration of such a mark in case of any doubt with regard to any confusion, mistake or deception which may arise in case of such a registration. 7 The Lanham Act has meritoriously implemented three requirements on marks for which a later Applicant seeks a concurrent use and further its registration: 1. the later Applicant must have used the mark in commerce prior to the time that the earlier registrant filed its application for registration, unless the senior registrant consents to the junior user s registration; 2. the later Applicant s use in commerce must have been lawful 3. concurrent use of the marks may not result in a likelihood of confusion. The aforementioned requirements stipulated under American Trade mark law seem to be a good way of removing ambiguity and serve as an appropriate set of parameter for the judiciary to identify cases of concurent use. Section 12 of the Act may be further understood by the judgment rendered in the case of Paras Products, A registered partnership firm v. Khemraj Devaramji Sudvesa, Proprietor and trading as Shree Charbhuja Products and The Joint Registrar of Trade marks. This appeal arose out of the order dated passed by the Joint Registrar of Trade marks, Mumbai in opposition No. BOM against application No filed for registration of Trade mark FEMINA in class 3 in respect of Bindis under the provisions of the Trade marks Act, The First Respondent (Khemraj Devaramji) herein i.e. Khemraj Devaramji (Properietorship) had filed an application for registration of the Trade mark FEMINA in class 3 in respect of Bindis under application No claiming user since the year The said application was advertised before acceptance under proviso to Sub-section (1) of Section 20 of the Trade mark Act, to which the Appellant (Paras Products)s (Paras Products) filed their notice of opposition to the Applicant s application, opposing the registration of the application on the grounds that, they were prior users and registered proprietors of the Trade mark FEMINA in respect of hair oil for sale in the State of Maharashtra as early as 1975 under No B in class 3 in the name of the partnership concern i.e. Paras Products, also the Trade mark FEMINA was registered under No as of in the name of an individual, a partner in the partnership firm Paras Products in class 3, that they were carrying on business of hair oil and attars under various Trade marks like FEMINA, APNA etc. and that their mark is a well-known mark by virtue of continuous and exclusive use and therefore by the registration of the First Respondent (Khemraj Devaramji) s mark, there is every possibility of confusion and deception being caused as the marks are identical. The objection was also based on the contention that the First Respondent (Khemraj Devaramji) is 7 Section 2(d) of the Lanham Act 115

5 2014] Concurrence in Trade mark usage- Concern, not for the Honest F-39 aware of the Appellant (Paras Products) s use of the Trade mark and as such the First Respondent (Khemraj Devaramji) s adoption is not honest and in such a case, it is not eligible for concurrent registration under the provisions of the Act. Therefore, in the view of the above objections raised by Paras Products, the First Respondent (Khemraj Devaramji) s (Khemraj Devaramji) Trade mark is, prohibited from registration under Sections 11(a), 11(b), 11(e), 12(1) and 18(1) of the Act to this, the First Respondent (Khemraj Devaramji)s filed their counter statement, denying the various allegations made in the notice of opposition. The Khemraj Devaramji had also stated that they had been using the said Trade mark continuously and exclusively since The affidavit of evidence were filed by both the sides and on completion of the formal procedures, the matter was set down for hearing before the Joint Registrar of Trade marks. Proceeding to which, the Joint Registrar had passed an order dismissing the opposition no. BOM-56511, hence allowing the application No to proceed to registration of mark Femina in respect of Bindis in name of the Khemraj Devaramji with a condition to confine the sale in the State of Maharashtra only, on the grounds thata) the objection under Section 18(1) of the Act was rejected on the ground that the documents relied on by the Appellant (Paras Products)/ opponent, namely, the two registration certificates bearing No and B were in the names of two persons i.e., one in the name of an individual and the other in the name of a partnership. So the proprietory right by use cannot be considered as no explanation was given as to how the Appellant (Paras Products)s/opponent have acquired the rights in the mark and so do not qualify to be the proprietors of the Trade mark. b) The objection under Section 12(1) of the Act was upheld for the reason that the two conditions under the provisions of Section 12(1) were satisfied, namely, that that the marks and goods were similar. c) The objection under Section 11(a) of the Act was also sustained as the Appellant (Paras Products)/ opponents have proved prior user of the Trade mark for hair oil and any subsequent use by the Applicant / First Respondent (Khemraj Devaramji) was likely to create confusion or deception. Therefore, the objection under Section 11(a) of the Act also was sustained. d) The First Respondent (Khemraj Devaramji) has proved his user since the year 1983 with corroborative evidence and as both the Appellant (Paras Products) and the First Respondent (Khemraj Devaramji) have been in the market for more than 14 years and no instance of confusion has been placed on record, the applicants / First Respondent (Khemraj Devaramji) are entitled for registration under Section 12(3) of the Act. The Appellant (Paras Products) were aggrieved by the said order and appealed against the same, therefore the matter was taken up for hearing in the Circuit Bench at Mumbai on One of the objections by the Appellant (Paras Products) was that the First Respondent (Khemraj Devaramji) had filed an application for registration of the Trade mark FEMINA earlier and had withdrawn with an undertaking that he will not file any such application. The court said to this that In our opinion, there is no bar for marking a second application for the same mark. An Applicant is entitled to withdraw an 8 Shri W.S. Kane learned Counsel for the appellant (Paras Products)s and Shri Rahul Chitnis, learned Counsel for the first respondent (Khemraj Devaramji) 119

6 F-40 Manupatra Intellectual Property Reports (MIPR) [Vol. 1 application and to make a second application so as to obtain the advantage of a longer period of user if the adoption is honest. The other issue about confusion and deception being caused to the public as the Trade mark FEMINA is identical; in such cases when the marks are identical, there is every possibility of confusion and deception being caused. The burden to prove that the registration will not cause confusion or deception will be on the opponent by user and reputation; the burden shifts to the applicant, if discharged by the applicant. The onus to prove that if the mark is allowed to be registered will cause confusion has not been satisfied by the Appellant (Paras Products) either by long user or reputation therefore, the objection under Section 11 of the Act also failed. The objection under Section 18(1) of the Trade mark Act also does not sustain, since the Appellant (Paras Products)s have failed to prove their reputation and use for long years. With regard to the issue under Section 12 of the Act, the court held that, we are of the view that the First Respondent (Khemraj Devaramji) s use has been concurrent and honest. The Appellant (Paras Products)s admit that they have been opposing the First Respondent (Khemraj Devaramji) s mark on earlier occasions also. We find that the first application was of the year 1983 and the same was not challenged. It is also apparently clear that the goods are being sold in the same area but no instance of confusion has been proved by the opponent / Appellant (Paras Products). In such circumstance, we are not able to appreciate the appellant s (Paras Products) objection in this regard. The First Respondent s (Khemraj Devaramji) goods have been confined for sale in the State of Maharashtra only and the Registrar has also granted registration with a condition being imposed restricting the registration of the Trade mark FEMINA to the State of Maharashtra. So, on this ground also the court was of the view that there is no infirmity in the order of the Joint Registrar and that the contention of the counsel for the First Respondent (Khemraj Devaramji) that there is an increase in the sales figures, which will only go to prove that the First Respondent s (Khemraj Devaramji) Trade mark FEMINA has definitely not caused any loss in the business and that registration of the First Respondent (Khemraj Devaramji) s mark will not cause any confusion or deception among the public needs to be appreciated. Therefore, the court held that the First Respondent (Khemraj Devaramji) has been using the Trade mark FEMINA in respect of self-sticking bindis since 1983 without any interruption with the knowledge of the Appellant (Paras Products). Having rejected the objections of the Appellant (Paras Products)s, the court confirmed the order of the Joint Registrar of Trade marks dated Therefore, the appeal was dismissed with no order as to costs. As may be understood from the above judgment that court granted registration under the provision of honest concurrent user on the ground that the both the marks were being used by two different entities for a long time and given that no deception or confusion could be said to have been caused by the mark claiming registration. Courts decision was also based on the fact that no loss in business has been caused to the earlier user of mark by the later mark. Though there are no codified guidelines or parameters similar to US law on the subject, judicial approach seems to be that of treating each case on its own merits. 120

IN THE INCOME TAX APPELLATE TRIBUNAL B BENCH, MUMBAI BEFORE SHRI R.C. SHARMA, AM AND SHRI MAHAVIR SINGH, JM

IN THE INCOME TAX APPELLATE TRIBUNAL B BENCH, MUMBAI BEFORE SHRI R.C. SHARMA, AM AND SHRI MAHAVIR SINGH, JM (Assessment Year: 2009-10) Deputy Commissioner of Income-tax- 10(1), Mumbai.455, Aayakar Bhavan,