Is the same trademark by different entities allowed?

A trademark must have distinctive qualities, making the mark unique from existing ones. In order to get registration, a mark must qualify for various conditions provided by the Trademarks Act. One of the grounds for refusal of trademark registration is when the mark is similar to the already existing trademark and when there are similarities in goods/services covered by the trademark.

Conditions are imposed for registration of the mark to prevent the later mark from taking undue advantage of goodwill earned by the already existing trademark. But there are certain situations where two entities in good faith use a similar mark. This article discusses the provision where two separate entities can register a similar trademark.

What is the provision of the trademarks act deals with the registration of similar mark by separate entities?

Section 12 of the Act provides that:

• Where there is the honest simultaneous use of the mark, or
• There are some exceptional circumstances because of the Registrar,
• The issue is related to identical or similar trademarks being used by different proprietors,
• The mark in issue is used for the same/similar goods or services.
• The Registrar may allow the registration of such identical or similar trademarks by more than one proprietor.
• An identical or similar trademark may or may not already be registered.
• The Registrar may impose conditions and limitations for the use of such marks by the proprietors.

What constitutes a similar trademark and an identical trademark?

SIMILAR TRADEMARKS: 

• That can be mistaken undeniably with an already existing mark. 
• It is deceiving in nature in comparison to the already existing mark.
• The resemblance in both the marks can lead to confusion for the consumer.

IDENTICAL TRADEMARK:

• The mark is a replication of an already registered trademark.
• The features of the mark are similar to an already existing one.
• An average person cannot easily identify the differences.
• It may not always be an exact copy of another mark.

When can a trademark be said to have honest concurrent use?

Through the landmark judgment of Kores(India) Ltd. v. M/s Khoday Eshwarsa and Son, the factors for determining the honest concurrent use have been laid out which suggest that:

• the portion of concurrent use of the trademark in regards to the goods.
• The time duration, volume, and area where the mark is used.
• The uprightness of the use of the mark.
• The level of confusion the mark is likely to cause and whether such an instance has been proved.
• The inconvenience that would arise if the marks became registered.

The defense for honest concurrent use cannot be used where well-known trademarks are involved. Also, the parties involved must produce strong evidence to prove the genuine concurrent use of the mark.