Honest and Concurrent Use Under Section 12: Registration Ground or Defence in Infringement?

Introduction

The Trade Marks Act, 1999, tries to strike a balance between the proprietary rights and ensuring fairness in this competitive world. The general rule is that a registered proprietor exclusively enjoys exclusive rights to their mark. But there are certain exceptions to this general rule, one of such is Section 12. Section 12 of the Trademarks Act, 1999 states that when more than one proprietor of a similar or identical trademark registers the trademark in an honest and concurrent manner, then the registrar may permit the registration. 

This provision ensures that the law does not function in a rigid manner but accommodates the real-world commercial problems. But the critical question arises whether the said section can be used as a defence in the case of infringement. To understand this question, it's important to first explore the scope of Section 12 and then examine whether it can be used as a defence in case of infringement proceedings.

Text and Scope of Section 12

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, the registrar may permit the registration by more than one proprietor of the Trademarks 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. 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. In case of infringement, the onus of proving the innocence lies with the party that has been challenged for the use of a trademark similar to that of the objecting party. The entire purpose behind the enactment of Section 12 of the Act is to ensure that genuine proprietors who have established commercial use of the mark for a considerable period of time should not be prevented from taking benefit of the mark only because said mark is already registered. The Supreme Court has laid down in London Rubber Co. Ltd. v. Durex Products[i] that in order to establish honest concurrent use, it is necessary to show commercial use of the mark and that such use must be for a considerable period of time. While this provision clearly facilitates concurrent registration, a different issue arises when users try to claim this as a defence in infringement proceedings.

Honest and Concurrent Use as a Defence in Infringement

In recent times, the parties were using this section as a defence, but the court in the case of KEI Industries v Raman Kwatra[ii] held that section 12 is essentially a provision which enables the Registrar to permit registration of a mark which is identical or similar to an existing mark in respect of the same or similar goods. It does not envisage honest and concurrent user as a defence to an allegation of infringement of a registered trade mark. In this particular case, the defendants, operating under the name Kwality Electrico (India), claimed inheritance and honest concurrent use of the mark “KEI” for electrical appliances, whereas the plaintiff, KEI Industries, had long-standing registrations and goodwill in the mark “KEI” for wires and cables. The Court rejected the defendants’ reliance on Section 12, holding that such a plea may justify concurrent registration but does not absolve liability for infringement once a registered proprietor has established exclusive rights.

The Delhi High Court also relied on Power Control Appliances v. Sumeet Machines,[iii] which dealt with an allegation of infringement under the Copyright Act, 1957, an honest and concurrent user was pleaded as a defence to the charge of infringement, for which purpose reliance was placed on the Trade and Merchandise Marks Act, 1958. There was no provision dealing with honest and concurrent users in the Copyright Act. It was held by the apex court that an authority permits the grant of concurrent registrations of identical or similar trademarks; if the use of the latter mark is honest and concurrent, it cannot be used as a defence to a charge of infringement. The Trade Marks Act, too, envisages honest and concurrent user only as a ground on which concurrent registrations of similar or identical marks could be granted by the Registry of Trade Marks. There is no provision in the Trade Marks Act that contemplates an honest and concurrent user as a defence to a charge of infringement of a trade mark. Thus, it stands as a well-settled principle that Section 12 operates only as a ground for permitting concurrent registration, and not as a defence to an action for infringement. Another relevant provision is 33, where the long and uncontested use of a mark may protect the user against infringement claims through the principle of acquiescence.

Section 33: The Principle of Acquiescence

If a proprietor knowingly allows another party to use a similar mark without objection for a considerable period, the doctrine of acquiescence under Section 33 may prevent the proprietor from later challenging such use. Sec 33, in the bare sense, simply allows the defendant to take advantage of acquiescence against the proprietor for his ignorance and inaction after being aware of the use of his mark. Acquiescence, in its legal context, represents passive consent granted through conduct rather than express agreement. It occurs when a trademark owner, despite having knowledge of unauthorized use of their mark, fails to take remedial action within the prescribed statutory period, thereby creating circumstances where judicial intervention may be denied on equitable grounds. In the case of Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and others[iv], it was held that acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allowing another to invade the rights and spending money on it;

(ii) it is a course of conduct inconsistent with the claim for exclusive rights for a trademark, trade name, etc.

Conclusion

It is therefore evident from the judicial pronouncements that section 12 is limited to concurrent registration, and the same cannot be extended to defence in infringement. Once a mark is registered, the law protects the registered proprietor’s exclusive rights. At the same time, Section 33 acts as a balancing mechanism by recognizing situations where the registered owner, even knowing about a conflicting use, remains silent. In these cases, the rule of acquiescence stops the owner from unfairly claiming rights later, thus protecting honest, long-time users. This interaction shows that while the law is strict in protecting exclusive trademark rights, it also makes sure that fairness is upheld.

Author: Ashpinder Kaur, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[i] AIR 1963 SC 1882.

[ii] 2022 SCC OnLine Del 1459.

[iii] (1994) 2 SCC 448.

[iv] (2006) 8 SCC 726.