Trademarks and honest concurrent use – Trademark Registration in Coimbatore
There operate many unregistered trademarks in small pockets in various markets within India as the registration of a mark is not mandatory. There is lack of information about the operations of unregistered trademarks prevalent in India. The information of trademarks protected in foreign countries is also not easily available within India. A small trader may have honestly selected or coined a trademark and used it in the local or regional market without any knowledge of its use in a foreign country or even in a market within India. A similar mark may be in operation at about the same time for similar or dissimilar goods or services.
It is fair that both need to be protected by law, once the honest contemporary use is proved. Moreover, a user of any such trademarks on his own or in collaboration with others may seek to expand his market and claim prior or concurrent user status. The trademark law enacts rules about these situations, but in reality it is not trademark law, but the law of evidence which mostly provides answers in such a situation. In cases of honesty, concurrent registration is conducive to both the proprietors of similar trademarks rather than refusal of registration to any one or both.
Precaution in selection:
The trademarks having a large market share normally indulge in high intensity advertising and would not like to share the benefits of the same with a concurrent owner of the trademark. Therefore, it is necessary that proprietors of large market share trademarks take precaution that they do not select a mark resembling a mark which is in prior use. Owners of such trademarks have to remain on vigil against use of similar mark to their mark the world over and take steps to restrain the use of similar marks in same, similar and even different goods or services. In the initial phases, this exercise is necessary to establish a trademark rights for one’s own mark whereas later on the emphasis gets shifted to maintaining sales or value of the mark. It may be recalled that a simultaneous or prior user of the mark is entitled to obtain registration of his trademark even after the registration of a subsequent similar mark.
Laws of concurrent registration -“trademarks”:
As stated in relative grounds for refusal of registration, the registrar is mandated to prohibit registration of a trademark in respect of goods or services If the trademark is identical or similar to an earlier trademark covering identical or similar goods or services and there is a likelihood of confusion on the part of public. Registrar has discretion to make exception in certain cases viz.
- In the case of honest concurrent user
- In the case of other special circumstances and
- In the case of prior use.
In relation to possibility of concurrent registration in addition to two parties one of which asserts concurrent use of trademark and the other party resisting the same, there is the role of office of registrar of trademarks. What view the registrar takes is important in grant of claim of concurrent use and resultant registration. The registry takes note of the following in examining evidence for registration under section 12.
The registrar office examines the evidence very carefully and certain aspects need keen attention. These are
The length of use:
The manual issued by the registry advises that a mark claiming concurrent use should have been in use for a reasonable period of five years prior to the date of application; however this period is only a guideline.
This actually means that the other party whose mark is claimed by the applicant for the honest concurrent use had a reasonable time in which the applicant can be aware to make any challenge which also can be done by the applicant.
Forms of use: Description, Goods or services, Geographic area:
The exhibits of the trademark must show that the mark has been used as is applied for registration or that any difference is negligible and will not affect the likelihood of confusion with the earlier trademark.
Insofar as the goods or services conflict with earlier trademarks the specification must be limited to those goods/services for which the mark is actually used as can be shown by evidence. It is to be noted that concurrent or prior rights are only for the mark used on specified goods in a specified area. There is no good to limit goods and services which are not in conflict with a simultaneous mark.
Depending upon the nature of goods it would be appropriate, if the applicant’s use is limited to a region and the conflict with the earlier mark is significant, for example, when both marks are identical and cover identical goods and or services. Territorial limitation is useful only in cases where the trading is local/regional.
Changes in ownership:
If there have been any changes in the ownership of the mark, it must be informed to the registrar. Where an affidavit declaration makes it clear that the user has been by the applicant, or a predecessor in business or with the consent of the proprietor of the earlier mark, it should assist the applicant’s case.
Honest concurrent user:
Section 12 gives to the registrar discretion of the following two types:
- To inquire into the bona fides of an applicant for registration of a mark which is identical or similar to a trademark in respect of the same or similar goods or services claiming to be either prior user or honest concurrent user and to allow such mark to go on the registrar with such conditions and limitations as the registrar may deem fit and proper to impose, and
- To enquire into the bona fides and rights of more than one applicant for registration claiming concurrent use of identical or resembling trademarks in respect of the same or similar goods or services, and to allow concurrent registration of such marks in the names of more than one proprietors with such conditions or limitations as the registrar may deem proper.
Triple identity position:
Concurrent registration is not allowed in what is known as the triple identity position, i.e. when the marks are identical or virtually identical and used not only in respect of the same goods but also in the same territorial area. The tribunal in allowing concurrent registration has also to keep in mind the interest of the public. Where the concurrent user is not honest and where there is misrepresentation or suppression of essential facts, no honest concurrent user will be inferred to exist.
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