Section 12 of Trademark Act, 1999 lets different people register the same or similar trademarks under certain rules. It allows honest and simultaneous use of marks by multiple parties without confusing customers too much. This provision balances the exclusive rights that trademark owners usually get with the real-world situations where different people might use similar marks independently like in different regions. The doctrine of honest concurrent use in Section 12 comes from fairness. It aims to avoid unfairly blocking people who genuinely use a mark. Understanding this section is important because it affects trademark applications, disputes, and court cases. This article explains Section 12 of Trademark Act in simple terms, covering its rules, conditions, court cases, and practical use in India.
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What is Section 12 of Trademark Act?
Section 12 of Trademark Act, 1999, says that if people use a mark honestly at the same time or if special situations make it fair, the Registrar can allow more than one person to register identical or similar trademarks for the same or similar goods or services. The Registrar can set rules or limits to make this work.
This section is an exception to Section 11, which usually stops registration of marks that are too similar to existing ones if they might confuse customers. Section 12 gives the Registrar the power to allow multiple registrations if the use is honest and simultaneous or if there are special reasons. Major points include:
Honest Concurrent Use: This means different parties genuinely use the same mark at the same time without trying to trick anyone.
Special Circumstances: These can include things like using the mark in different areas, for different products, or after a company merger.
Conditions and Limits: The Registrar can add restrictions, like limiting use to certain regions or requiring a note on the mark to avoid confusion.
In short, Section 12 ensures trademarks show who makes a product while being fair to those who use the mark honestly
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Conditions for Invoking Section 12 of Trademark Act
To use Section 12 of Trademark Act, applicants must meet strict requirements. The person asking for registration must prove they use the mark honestly and at the same time as others. They need strong evidence. Courts and the Registrar of Trademarks look at several factors to decide if someone qualifies.
The main conditions are:
Honesty in Adoption and Use: The applicant must show they chose and used the mark in good faith, without knowing about the other person’s mark. They must prove they didn’t try to benefit from the other’s reputation.
Concurrent Use: They need proof of using the mark at the same time as the other party for a long period, often years, in different markets or areas.
Minimal Confusion: The use shouldn’t confuse customers about where the goods or services come from.
Evidence of Use: Documents like sales receipts, ads, or market surveys must show customers link the mark to the applicant.
No Well-Known Status: If the earlier mark is very famous, Section 12 may not apply because famous marks get stronger protection under Section 11(2).
Court cases have listed specific factors to check. In the important case Kores (India) Ltd. v. Khoday Eshwarsa and Son, the Bombay High Court gave five key points to consider:
Honesty of Concurrent Use: Was the mark chosen honestly without trying to deceive?
Amount of Concurrent Use: How much and how long has the mark been used, including in which areas and with what sales?
Likelihood of Confusion: Could customers get confused about the source of the goods or services?
Evidence of Actual Confusion: Are there examples of customers being confused in the market?
Balance of Hardship: What’s fairer—allowing or denying registration, and what conditions might help?
These factors guide the Registrar’s decision to ensure Section 12 is used fairly. Special situations, like licensing deals or different markets, can also qualify if they support allowing multiple registrations without hurting the public.
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Landmark Judgements on Section 12 of Trademark Act
The caselaws given below clarifies how Section 12 of Trademark Act works through many decisions. These cases show how the rule balances rights in real disputes:
In London Rubber Co. Ltd. v. Durex Products Inc. (1963), the Supreme Court allowed the mark “Durex” for surgical rubber goods by one party, even though another used it for contraceptives. The Court focused on honest concurrent use under the old 1958 Act, noting both parties used it for a long time with little confusion.
In Kores (India) Ltd. v. Khoday Eshwarsa and Son (1984), the Bombay High Court looked at similar typist logos. It used the five-factor test but denied registration because the marks were too similar and could confuse customers, showing honesty alone isn’t enough.
In Goenka Institute of Education and Research v. Anjani Kumar Goenka (2009), the Delhi High Court allowed the surname “Goenka” for schools in different states (Delhi and Rajasthan). The Court used Section 12 and added conditions, like including the full trust name in the mark, because both sides showed honest use and worked in separate areas with low confusion risk.
In Lowenbrau AG v. Jagpin Breweries Ltd. (2023), the Delhi High Court didn’t stop the defendant from using “Lowenbrau” for beer, calling it a general term (meaning “lion’s brew” in German). The Court saw honest concurrent use because the plaintiff waited too long to act, and the defendant had built a strong market in India. This showed that delay can help concurrent use claims.
Other cases, like Power Control Appliances v. Sumeet Machines Pvt. Ltd., allowed concurrent use for household appliances, while Daimler Benz Aktiegesellschaft v. Hybo Hindustan limited the rule for famous marks like “Benz.” These cases show Section 12 works only with strong proof and careful review.
Summary
Section 12 of Trademark Act, 1999 provides a fair exception in trademark law by allowing multiple registrations for honest concurrent use or special situations. By requiring proof of good faith, low confusion and strong evidence, it protects customers while encouraging fair competition. the cases also shows that it needs careful handling. Understanding Section 12 of Trademark Act helps to manage trademarks better and ensures that they fit real-world market needs. Section 12 also supports the objective of the Trademark Act i.e. marks that show the source clearly without deceiving anyone.
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Section 12 of Trademark Act: FAQs
Q1. What is Section 12 of Trademark Act?
Section 12 of Trademark Act allows registration of a trademark by multiple parties if they use it honestly and concurrently without causing confusion.
Q2. What is Section 12 of the Trade Marks Ordinance?
Section 12 of the Trade Marks Ordinance permits registration of similar trademarks by different owners if their use is honest and doesn’t deceive consumers.
Q3. What is honest and concurrent use?
Honest and concurrent use is when multiple parties use similar trademarks genuinely and simultaneously without misleading customers.
Q4. What is the s12 Trade Marks Act?
Section 12 of the Trade Marks Act allows registration of a trademark by different users if their use is honest and doesn’t confuse the public.
Q5. What is a trade mark class 12?
Trademark Class 12 covers vehicles, including cars, bicycles, and other transport-related goods.
