Doctrine of Concurrent User

The Doctrine of Honest Concurrent User is an exception to the general rule that two identical or similar trademarks cannot coexist. It allows for the registration of a trademark even if it is similar to an existing one, provided that both parties have been using their marks simultaneously and in good faith.

In India, this principle is codified under Section 12 of the Trade Marks Act, 1999.

1. The Statutory Rule (Section 12)

The Registrar may permit the registration of marks that are identical or nearly resemble each other for the same or similar goods if there has been honest concurrent use or other special circumstances.

This registration is often subject to certain conditions or limitations, such as:

• Restricting the geographical area where the mark can be used.

• Limiting the specific goods or services it applies to.

2. Essential Requirements

To successfully claim this doctrine, the applicant must satisfy the Registrar on several counts:

• Honesty of Adoption: The applicant must prove they didn't know about the existing mark when they started using theirs, or they had a valid reason to believe there would be no conflict.

• Quantum of Use: The applicant must show substantial usage over a period of time. This includes sales figures and advertising expenses.

• Likelihood of Confusion: The court assesses whether the degree of confusion is manageable. A small amount of confusion may be tolerated if the user has a long history of honest trade.

• Relative Hardship: The Registrar considers the "balance of convenience"—how much the applicant would suffer if the mark were refused versus the potential damage to the original owner.

3. Purpose of the Doctrine

The doctrine serves to balance the rights of two legitimate businesses. It recognizes that if a trader has built up significant goodwill through years of honest labor, it would be commercially unjust to suddenly stop them from using their brand simply because another similar mark exists elsewhere.

4. Case Law Example

In the landmark case of Kores (India) Ltd. v. M/s Khoday Eshwarsa and Son (1984), the court identified five primary factors to consider:

1. The honesty of the concurrent use.

2. The extent of use (duration, area, and volume).

3. The degree of confusion likely to ensue.

4. Whether any instances of actual confusion have been proven.

5. The relative inconvenience to the parties.