Introduction
Imagine two businesses in different corners of India unknowingly building brands around the same name—both in complete good faith. Should one be forced to abandon years of effort simply because the other registered first?
In today’s crowded marketplace, such conflicts are common. The doctrine of honest concurrent use offers a balanced, practical solution by allowing similar or identical trademarks to coexist—provided the usage is honest, independent, and non-deceptive.
Indian trademark law acknowledges the realities of business and ensures that good faith matters just as much as priority of registration.
Legal Framework in India
Honest concurrent use is legally recognized under Section 12 of the Trade Marks Act, 1999. This provision serves as an exception to the principle that only one proprietor may register a particular trademark for specific goods or services.
Section 12 empowers the Registrar to allow registration of identical or similar trademarks by more than one proprietor if honest and concurrent use is proven.
The objective is two-fold:
- Protect the public from confusion
- Protect genuine businesses that have built goodwill independently
Supporting Sections
- Section 11(1): Prohibits registration of identical or deceptively similar trademarks unless Section 12 applies
- Section 124: Allows removal of a trademark if concurrent registration was wrongly permitted
Key Elements of Section 12
- Honest Concurrent Use
Registration is allowed only if the Registrar is satisfied that both adoption and use were honest and concurrent. - Special Circumstances
Even beyond honest use, unique circumstances may justify concurrent registration. - Registrar’s Discretion
The Registrar has broad authority to approve or deny registration. - Conditions & Limitations
Restrictions may be imposed to minimize confusion and protect consumers.
Essential Requirements for Honest Concurrent Use
To qualify, the applicant must satisfy the Registrar on several important factors—commonly referred to as Lord Tomlin’s Test.
1. Honesty of Adoption
The mark must have been adopted in good faith, without knowledge of the earlier trademark. Any intention to deceive or exploit goodwill disqualifies the applicant.
2. Duration of Use
Longer, continuous, and substantial usage improves the applicant’s chances. Evidence of use over several years carries strong weight.
3. Geographical and Quantitative Use
Applicants must prove:
- Areas where the mark has been used
- Volume of business
- Sales records
- Advertising expenditure
4. Degree of Confusion
While some confusion may exist, it must be minimal and manageable.
5. Relative Inconvenience
The Registrar assesses:
- Inconvenience to the applicant if registration is denied
- The risk of confusion to the public
- Commercial hardship due to rebranding
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Important Case Laws
1. London Rubber Co. Ltd. v. Durex Products (AIR 1963 SC 1882)
The Supreme Court allowed both parties to use the “Durex” trademark due to long-standing, honest, and independent use in different markets.
2. Kores (India) Ltd. v. M/s. Khoday Eshwarsa & Son (1984)
A landmark case applying Lord Tomlin’s Test in India. The Court stressed the importance of proving honest and concurrent use with strong evidence.
3. Consolidated Foods Corp. v. Brandon & Co. (1961)
Concurrent registration permitted because both parties adopted similar marks independently and without knowledge of each other.
4. Goenka Institute of Education & Research v. Anjani Kumar Goenka (2009)
The marks were allowed to coexist as both entities used “Goenka” in different educational contexts with minimal risk of confusion.
Key Judicial Principles
1. Registration vs. Infringement Defense
Courts view Section 12 as a ground for registration, not a guaranteed defense in infringement cases.
2. Burden of Proof
The applicant must prove:
- Independent adoption
- No prior knowledge of the earlier mark
- No intent to deceive
- Concurrent use in distinct territories
3. Timing and Knowledge
If the applicant knew or should have known about the earlier mark due to market presence or publicity, the claim of honest use may fail.
Conclusion
The doctrine of honest concurrent use balances consumer protection with the practical realities of business growth. When similar trademarks evolve independently and in good faith, the law provides a flexible remedy that supports fairness and healthy competition.
However, success under Section 12 requires clear, credible evidence of honest and concurrent use. The Registrar’s discretion remains central, ensuring that the public interest is always protected.
Disclaimer: This blog is for general informational purposes only and does not constitute legal advice. Privacy laws may vary based on circumstances and jurisdiction. Readers are advised to consult a qualified legal professional, such as Bisani Legal, for specific advice regarding data protection, privacy rights, or related legal concerns.
