Section 12: Refusal of Trademark Registration

by Jitender
Section 12: Refusal of Trademark Registration

This article discusses Section 12 of the Trade Marks Act, 1999, focusing on the honest and concurrent use of a trademark, along with relevant case laws and essential details.

Introduction

Trademarks play a crucial role in brand identity. According to Section 2(zb) of the Trade Marks Act, 1999, a trademark is defined as a mark capable of being represented graphically, helping to differentiate goods and services from those of others. This can include shapes, color combinations, letters, and more. The Trade Marks Act, 1999, provides a legal structure for protecting trademark owners’ rights while outlining their responsibilities. The Act specifies numerous sections that govern essential aspects of trademarks, such as the registration process, rights, ownership, licensing, and specific limitations.

Historically, traders used watermarks or potter’s marks as trademarks to distinguish their products from competitors’ goods. The need for formal trademark protection grew during the industrial revolution due to increased mass production, leading to counterfeiting and consumer confusion. The Paris Convention for the Protection of Industrial Property, established in 1883, marked a significant step towards standardized trademark registration across member countries. As economies evolved, the definition of trademarks expanded to include services, symbols, and slogans. Hence, trademarks have a rich history dating back to a time when legal protections for trademark owners were non-existent.

Honest Concurrent Use of a Trademark

The idea of honest concurrent use is outlined in Section 12 of the Act of 1999. This legal principle allows two or more parties to use similar or identical trademarks for their goods and services, provided certain conditions are satisfied. The goal of this section is to enable an applicant to demonstrate that they have been using a trademark in good faith without knowing about any previously registered similar trademark regarding their goods and services.

It’s essential for applicants to establish that they are bona fide users of the known trademark. Important legal cases have shaped our understanding of the concept in Section 12. Although an existing registered trademark can lead to registration refusal under Section 11, Section 12 helps to minimize consumer confusion regarding the ownership of goods and services. It specifies that when honest concurrent use or other special circumstances exist, the Registrar can permit multiple registrations for similar or identical trademarks related to the same or closely related goods or services, along with any conditions deemed appropriate.

Essentials of Section 12 of the Trade Marks Act, 1999

Section 12 of the Act primarily discusses the idea of honest concurrent use in trademark registration. This provision creates an exception to the general rule prohibiting the registration of identical or similar trademarks for closely related goods or services. The following are the key considerations:

Good Faith Use: Both parties involved must demonstrate that they have used their trademarks in good faith, with no intention of deceiving one another.

Distinct Geographic Markets: Operating trademarks in different geographical regions can help substantiate claims of honest concurrent use, as highlighted in the case of Goenka Institute of Education & Research vs. Anjani Kumar Goenka & Anr. (2009).

Concurrent Use: Applicants must show that they have been using the same trademark for a substantial duration without being aware of the other party’s usage.

Consumer Confusion: Both parties need to ensure that their use of the same trademarks does not confuse consumers regarding the source of goods and services.

Difference in Goods and Services: Parties using the same trademark should demonstrate a significant difference in their goods, enhancing their case for claiming honest concurrent use of the trademark.

Special Circumstances Under Section 12 of the Act

Section 12 also identifies special circumstances that may justify the registration of identical or similar trademarks by different proprietors. The term “other special circumstances” gives the Registrar the authority to allow such registrations under specific conditions. Here are some examples of potential scenarios:

  • Licensing Agreements: If the trademark owner has granted a license for the use of the trademark and there is a formal agreement, the Registrar may exercise discretion.
  • Geographical Limitations: When the parties operate in different regions, the Registrar may recognize this as a special circumstance. For instance, McDonald’s may have a global presence, allowing local businesses in areas with limited contact to use similar logos without infringing on McDonald’s rights.
  • Distinct Market Segments: Similar trademarks can serve different consumer bases, qualifying as a special circumstance. For example, “Candy” can refer to both edible candy for kids and clothing in candy colors.
  • Mergers and Acquisitions: After a merger or acquisition, unique trademark registrations may be considered as special circumstances.

Section 12 as a Defense Against Trademark Infringement

Section 12 is instrumental in preventing consumer confusion about ownership and origin of goods. For trademarks to receive protection, they must be registered with the trademark Registrar. However, the Registrar can deny registration based on Sections 9 and 11 of the Act, which involve absolute and relative grounds for refusal, respectively. If registration is denied under Section 11, applicants can present various defenses. Honest concurrent use under Section 12 is a defense that can protect applicants from trademark infringement disputes.

To leverage this defense, the applicant must prove that they have used the trademark in good faith and were unaware of any previously registered or used trademark by another party. The applicant carries the burden to demonstrate that consumers associate their trademark with their goods and services.

Documents to Prove Honest Concurrent Use

To substantiate claims of honest concurrent use as per Section 12, certain documents are necessary:

  1. Evidence showing the duration of the mark’s use.
  2. Advertisements featuring the trademark and proof of advertising expenditures are crucial for demonstrating honest use of the trademark.
  3. Financial records detailing annual sales of the goods and services under the trademark are also critical evidence.

These documents help show that a trademark has been linked to a specific set of goods, differentiating it from other similar trademarks.

Relevant Case Laws

Kores (India) Limited vs. Khoday Eshwarsa And Son, And Anr. (1984)

Facts of the Case

In the case of Kores (India) Ltd. vs. M/s Khoday Eshwarsa and Son (1984), the Bombay High Court examined an application by Kores (India) for a trademark that featured a device of a typist at work. This application was opposed by Khoday Eshwarsa, who already had a registered trademark featuring the word “Khoday.” The case centered around whether Kores’ trademark was deceptively similar to Khoday Eshwarsa’s.

Issues Raised

Was Kores Limited’s trademark deceptively similar to that of Khoday Eshwara Son, thus causing confusion among consumers?

Judgment

The Bombay High Court ruled that Kores’ trademark too closely resembled Khoday Eshwarsa’s registered trademark. Given the identical nature of their goods and the overwhelming similarities in presentation, confusion among consumers was deemed likely.

London Rubber Company Ltd. vs. Durex Products (1963)

Facts of the Case

In this case, Durex Products applied to register the trademark “Durex” for their contraceptive products. London Rubber Company contested this, claiming they had long used the name “Durex” in India. Despite this, the Deputy Registrar approved the registration for Durex Products, prompting London Rubber Company to appeal.

Issues Raised

  1. Had London Rubber Company established prior use of the trademark “Durex”?
  2. Would the concurrent use of the “Durex” trademark lead to confusion among consumers?
  3. Was Durex Products entitled to register the trademark “Durex” in India?

Judgment

The Supreme Court held that under Section 10(2) of the Act, the Registrar may permit registration of similar or identical marks given evidence of honest concurrent use or special circumstances. It underscored the right of small traders to protect their trademarks if they can demonstrate honest concurrent use.

Goenka Institute of Education and Research vs. Anjani Kumar Goenka (2009)

Facts of the Case

This case, decided by the Delhi High Court, involved two entities using “Goenka” in their trademarks. Goenka Institute operated a school in Delhi while another operated in Rajasthan. The applicant neither knew of the respondent’s use of the trademark, as “Goenka” was part of both of their trust names.

Issues Raised

  1. Could Anjani Kumar Goenka claim exclusive rights over “Goenka”?
  2. Did the use of “Goenka” by Goenka Institute infringe on the trademark or amount to passing off?
  3. Could the honest concurrent user doctrine be applied here?

Judgment

The court confirmed the doctrine of honest concurrent use, allowing both parties to register their trademarks with some conditions to minimize consumer confusion.

Lowenbrau AG vs. Jagpin Breweries Limited. (2023)

Facts of the Case

This recent case involved Lowenbrau AG and Jagpin Breweries, both beer manufacturers in Germany, litigating over the use of the term “Lowenbrau” in India.

Issues Raised

  1. Did Jagpin Breweries have the right to use the “Lowenbrau” trademark in India without infringing on the rights of Lowenbrau AG?

Judgment

The court observed that “Lowenbrau” was a term of German origin widely used by various breweries, labeling it a generic term. Given this, and the long inactivity in pursuing legal action by Lowenbrau AG, it allowed Jagpin Breweries to continue using the trademark under the honest concurrent use defense.

Conclusion

Ultimately, the honest concurrent use concept represents a balance between trademark rights and practical market conditions. It creates opportunities for multiple parties to coexist and utilize similar trademarks, but caution is advised. Each trademark situation is unique, and the registrar must carefully consider claims of honest concurrent use. Seeking legal advice in these matters is always wise. Effectively documenting honest concurrent use can reduce consumer confusion and uphold the distinctiveness necessary for trademark registration.

Frequently Asked Questions (FAQs)

Can Section 12 be used as a defense in a trademark infringement case?

Section 12 presents the concept of honest concurrent use, which isn’t a straightforward defense to trademark infringement cases but can help define potential rights and remedies.

What are the risks of claiming honest concurrent use?

The applicant bears the onus to demonstrate honest concurrent use, making it challenging to present all necessary elements. Unsuccessful claims could lead to damages or injunctions.

Can the Registrar refuse to allow honest concurrent use?

Yes, the Registrar can refuse to recognize honest concurrent use if specific requirements are unmet, considering factors like the likelihood of confusion and geographic limitations.

What if a trademark has been in use but not registered?

Using an unregistered trademark offers limited protection, mainly under common law. Registration is key for robust protection against infringement; otherwise, it often falls under passing off rather than outright infringement.

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