Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.
Citation: 2024 SCC OnLine Del 3141 Court: Delhi High Court Date Decided: 13 May 2024 Judge: Justice Anish Dayal
Background
Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.
Plaintiff’s MARK
Defendant’s MARK
Legal Issues
Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.
Parties’ Contentions
Plaintiff (Relaxo Footwears Ltd.):
Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.
Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.
Decision
The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:
The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.
Ratio Decidendi
The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
Bibliography
Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors. [2024] SCC OnLine Del 3141
One must obtain Trademark Registration in India to acquire Trademark Rights. In India, Trademark Rights are protected as statutory rights under the Trademark Act of 1999. Under the Act, this kind of protection is administered by the Controller General of Patents, Designs, and Trademarks. The Trademark Act of 1999 addresses trademark fraud prevention, registration, and protection. The rights of the trademark holder, penalties for trademark infringement, damages settlement, and trademark transfer processes are also covered.
WHAT IS A TRADEMARK?
A trademark is a type of intellectual property that sets one brand’s products and services apart from those of other brands. A trademark consists of a word, phrase, insignia, symbol, or combination of all in one. A trademark indicates who owns a certain commodity or service, and as the owner has the sole right to use the mark, they may object if someone else attempts to use it for their own goods or services.
Trademark as defined under section 2(1)(zb) is ““trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;”
DIFFERENT KINDS OF TRADEMARKS IN INDIA
According to WIPO, a trademark can be “A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless.” Hence, everything right from signs, symbols, sounds, fragrances, colours to shapes can be trademarked. The possibilities are endless. So long as a mark is unique, distinctive, and helps in source identification, it can be trademarked.
HOW TO OBTAIN TRADEMARK REGISTRATION IN INDIA?
You must first rule out the possibility that the mark you want to use as a trademark for your business is free. For this, you must check whether your proposed trademark is already used or registered by someone else. This is done by conducting a thorough trademark search.
The process of submitting the registration application follows the completion of the search. Depending on one’s jurisdiction, the application must be submitted in Form TM-A either physically at the Trademark Registry Office or online at IP India’s official website. The fees will be determined for each class of products and/or services contained in the application, and the application must be submitted for registration of a single class or several classes.
The necessary paperwork and all of the trademark’s details must be included with the application. A user affidavit attesting to the mark’s usage and providing proof of its previous use in commerce must be attached if the trademark was already in use prior to the application being filed (i.e., the owner wishes to claim prior use).
After this comes the different stages of the trademark registration process, namely:
Formality Check: Here, the Trademark Registry checks whether all the formalities and procedural aspects have been duly and correctly done by the applicant while filing its trademark application. During this stage, the status of your trademark application is either ‘Formality Chk Pass’ or ‘Formality Chk Fail’, depending on whether there are any defaults observed.
Examination Stage: During this stage, the Examiner of Trademarks checks whether your proposed mark qualifies for trademark registration. Here, the examiner basically checks whether a mark possesses trademarkable qualities. For this, the Examiner typically refers to Section 9 and Section 11 of the Trade Marks Act, 1999. During this stage, the status of your trademark application is ‘Objected’.
The applicant gets 1 month to file reply to the Examination Report to submit its defence on why their trademark deserves to be granted registration. If reply is found satisfactory, the trademark proceeds for acceptance, if not, then Hearing for the matter is scheduled. If the Examiner is not satisfied with the defence of the applicant, the trademark application is abandoned.
Acceptance and Advertisement: If the Examiner is satisfied regarding the trademark-ability of the proposed mark, they accept the trademark and publish it in the trademark journal. A trademark stays Accepted and Advertised for a total period of 4 month, during which, any person in the entire world, who has an objection over the registration of the advertised mark, may oppose it. If the trademark does not receive any oppositions during this 4 month period, then the trademark receives its registration.
Opposition: During the 4 month, any person may file opposition against the registration of a trademark under section 21 of the Trade Marks Act, 1999. Such opposition may be filed on varied grounds typically contained under section 9, 11, 27, 28, 29, 102, 103 and 104 of the Trade Marks Act. Grounds for filing opposition may be – Similarity or identicalness with a prior used trademark, descriptiveness of a trademark, trademark being of such a nature that would be likely to cause confusion or deception, lack of bona fide intention, infringement, passing off, false description of trademark etc.
Counterstatement: After filing of the opposition, the applicant gets an opportunity in the form of counterstatement to file its written defence in support of its trademark within 2 months of service of the notice of opposition. Here, the applicant has to explain why their trademark deserves to be granted registration and how the allegations and contentions contained under the opposition are incorrect.
Evidence Stage: After counterstatement comes the stage of evidence submission. Both the opponent and the applicant get an opportunity to present evidence by the way of affidavit in support of its opposition and trademark application respectively. They may however, choose not to give evidence at this stage and solely rely on the grounds contained under the opposition and the counterstatement.
Hearing Stage: During this stage, the opposition proceedings are scheduled for hearing before the Registrar of Trademarks, who, after hearing the contentions of both the side, decides whether such trademark deserves registration or the same shall be refused registration.
The registrar passes it order based upon written statements, evidences and arguments from both the parties. Such order is a written order.
Registration: After this stage, if the Registrar is satisfied with the registrability of the trademark application, the trademark is entered into the trademark register and trademark registration is granted.
REQUIRED DOCUMENTS
To register a company’s trademark online in India you must follow a process, first you need to provide the following details to the Trademark Registry through TM form:
Applicant’s Name: The name of the person, company, or entity applying for the brand Trademark Registration.
Class: Specify the class in which your goods or services fall, such as sole proprietorship, partnership, private limited company, etc.
Trade Objectives: Provide a brief description of your trade objectives.
Brand Name: Clearly mention the name, logo, or slogan that you intend to use as trademark.
Registered office Address: Provide your registered office address from where you are going to operate your business.
To apply for Trademark Registration online, or simply to register a logo, you will need to submit the following papers in addition to these details:
APPLICANT TYPE
REQUIRED DOCUMENT
Individual
PAN card Aadhar card
Proprietorship
GST Certificate PAN Card Aadhar card
Company
Incorporation certificate Company PAN card MSME certificate (if applicable) Logo (if applicable)
Partnership Firm
Partnership Deed Partnership PAN card MSME Registration certificate Logo (if applicable)
Limited Liability Partnership (LLPs)
LLP Deed Incorporation certificate LLP PAN Card Logo (if applicable)
Trusts
Trust Deed Trust PAN Card Logo if applicable
CONCLUSION
Trademark Registration is an important process of protecting the identity of a brand and giving exclusive rights over its usage. Trademark protection in India is under the Trademark Act of 1999, which provides legal protection against infringement and abuse. Ranging from word marks to non-conventional marks, a large range of trademark categories can be registered, depending upon the business. The Trademark Registration process entails carrying out an extensive trademark search, submitting the proper application along with supporting documents, and familiarizing oneself with the legal usage of trademark symbols such as ™ and ®. Registration of a trademark not only provides businesses with legal protection but also helps to increase brand value and customer confidence in the marketplace.
In this age of competition, the name, logo, and identity of a brand are everything. Brands are recognized by their names and logos, so that is part of the reason people trust them. But what if somebody unjustly replicates a well-known brand’s emblem or title?
This is where the ethical aspects of trademark law come in.There’s more to trademark law — registering logos or slogans — than just trademark law; it’s also about doing the right thing.
Being ethical means that you play fair, that you respect other people’s work, and that you do not mislead customers.
Let’s break this down to understand what it means in layman’s terms.
What is a Trademark?
A trademark can be a sign, symbol, word, or logo that helps people identify your business or product.
For example Nike Swoosh, the McDonald’s golden arches or the Apple logo have become so synonymous with the companies that you can tell immediately who owns them.
Trademarks provide confidence to consumers that they know what they are purchasing.
This is why it’s so important that trademarks are used fairly and ethically.
What Are Ethical Considerations in Trademark Law?
Ethics in trademark law is about ensuring that:
You don’t replicate someone else’s brand.
You can make a ton of products under one logo or product line without confusing the customer into thinking they are all alike.
You are sensitive towards cultural and religious sentiments.
You don’t use trademarks in a way that damages the business or reputation of others.
It’s about being honest and fair with your making and using your brand.
Why Are Ethics Important in Trademark Law?
The ethics in trademark law matter because:
Protects Honest Businesses: If anyone was allowed to copy brands freely, this would harm original creators. Ethics safeguard people who work tirelessly to create their brands.
Prevents Customer Confusion: Consider if you bought a sneaker designed to look like a Nike shoe, and when you bought it realized it was not the real thing — you would feel ripped off. We have ethics that guard against that kind of confusion.
Encourages Creativity: Ethics, on the other hand encourage businesses to forge their own unique identities rather than imitating.
Respects Society and Culture: Trademarks cannot offend public sentiments or tarnish religious symbols.
Builds Long-Term Trust: In fact, ethical branding creates cult-like consumers who will trust you for years to come.
Best Practices and Alternatives: A Case for Ethics
Let’s understand this with simple examples:
Ethical Practice
Creating a Unique Logo: Rather than copying, you come up with yourown new logo.
Choosing An Original Brand Name: You do not use names that are similar to known brand names.
Respecting National Symbols: You are not disrespecting a national flag or a religious symbol in your brand.
Unethical Practice
Copying a Famous Logo: Creating a logo that was close to Nike’s Swoosh and deceiving customers.
Using Confusing Brand Names: We’re talking about Naming your company ”Adibas” to get people to think its Adidas.
Disrespecting religious Values: Using sacred images or holy slogans just to gather attention without understanding their meaning.
Ethical Guidelines under Indian Trademark Law
There are also some ethical rules enshrined within the Trade Marks Act, 1999 in Indian law:
The examiners also accept that you cannot register a trademark that offends religious sentiments.
You cannot register anything that is immoral or against public order.
You cannot trademark something too alike an existing brand.
It safeguards that trademarks are not misleading, fair, and honest.
How Young Entrepreneurs Can Be Ethical
If you are a young entrepreneur launching a brand, this is what you can do to remain ethical:
Research Before You Create: Ensure your logo or name isn’t too similar to another person’s.
Respect Culture and Religion: Be sensitive in how you use names, images or slogans.
Be Original: All of your idea’s have more impact than ones you have taken from someone else.
Register Your Trademark: Legally protect your creativity so that no one else can abuse it.
It is good for all of us, and ultimately, it is good for your brand success too!
Ethics and Global Trademark Practices
There is a lot of emphasis on ethical trademark practices even at the international level (WIPO – World Intellectual Property Organization):
Equal fairness is expected from global companies.
Trademarks that deceive, confuse or are harmful to public interests are prohibited.
No matter, whether you’re a small business owner in India or a big startup dreaming international, ethics matter everywhere.
Conclusion: Ethics = Stronger Brands
It is not about who files first
It’s about who plays fair.
Ethical considerations ensure that:
Good businesses thrive.
Customers are happy.
Innovation continues.
Young innovation entrepreneurs need to remember that success without values is temporary.
But success in the realm of ethics, engenders trust, loyalty and respect — the cornerstones of any great brand.
Thus, create your brand with creativity, guard it with trademark law and reinforce it with ethics.
Because, after all, playing fair is the smartest business strategy!
It’s a story of a dream home (sapano ka ghar). Although this story or the seed of this dream started from my childhood. I have been raised in a family of eight people: my mom dad and 5 siblings. We all used to live in an apartment in Deeg, a small city near Agra. Moreover, we will dive in the knowledge of this topic intellectual properties in my dream house.
In the apartment we all used to live only has two rooms, one kitchen and one bathroom. One room is mainly used as a hall for the purpose of welcoming guests into the house. That leaves us with only one room where our whole family used to live. One of my siblings was very small; he used to sleep with Mom and Dad, and the other four siblings used to live with me in the same room where we all used to play, fight, study and do everything.
At that moment, it’s my dream and mission to build The House of My Dream. Now after these years of wait me and my best friend has finally found The Place in our dream neighbourhood that is two big plots side by side, makes it so much easier to visit each other whenever we want.
Soon after looking into the property, we managed to buy the plots with all the legal paperwork done by my lawyer who is also my best friend with whom I have purchased the property.
1. THE COPYRIGHT ACT, 1957:
As we embarked on the journey of designing our dream home, one of the most exciting yet overwhelming tasks was the blueprint of the house and also the elevation design for that, we worked closely with our architect to develop a custom blueprint and elevation, designed entirely to our vision something that reflects our personal taste.
This blueprint, which includes the floor plan, room layout, and along with the elevation, is a result of creative and technical planning. As such, it qualifies as an “artistic work” under Section 2(c) of the Copyright Act, 1957.
According to Indian copyright law, the moment an original work like this is created the architect or client gains automatic copyright protection. So, any unauthorised use by someone else other than the original owner would amount to copyright infringement.
2. THE TRADEMARK ACT, 1999:
As part of our interior planning process, we visited several tile showrooms across the city. To our surprise, we were overwhelmed by the vast range of options available in tiles differing not just in colours and patterns, but also in shape and material. Each brand showcased something unique. While some tiles were known for their strength and durability, others, though visually appearing stronger and beautiful, were relatively fragile and less reliable in terms of long-term quality.
After comparing various samples and considering both aesthetics and durability, we decided to go with tiles manufactured by the renowned brand ‘Kajaria’. Kajaria has built a strong reputation over the years for producing high-quality, long-lasting tiles, and their tagline “The quality speaks for itself” truly aligns with our experience.
In the process, we also came across other reputed companies like Somany Ceramics and Johnson Tiles, each of them has established a strong brand identity. A common feature among these top brands is that their logos are printed on the reverse side of every tile, and also prominently displayed on the packaging. This branding serves as a mark of authenticity and trust.
From an Intellectual Property Rights perspective, this is a clear example of protection under theTrademarks Act, 1999. The name, logo, tagline, and even specific branding elements used by these companies are all protected trademarks. These trademarks not only help distinguish one company’s products from another’s in a competitive market but also play a vital role in maintaining the goodwill and reputation the company has earned among consumers.
Moreover, trademarks are essential in preventing duplicating and misuse of a well-established brand. If a local manufacturer attempts to falsely use the name or similar logo of Kajaria, for instance, it will amount to trademark infringement and the legal protections under the Trademarks Act would allow Kajaria to take action to protect its brand.
Thus, our choice of tiles was not just based on looks or price, but also on the credibility that the brand carrieswith itself, assuring us that we are investing in a product that is trusted, original, and protected under Indian IPR laws.
After finalizing the customized blueprint and elevation of our house protected under copyright and selecting high-quality, trademarked tiles from a trusted brand like Kajaria, we moved to another vital part of the home-building journey: choosing the right fans and lighting. In terms of durability for long-term use, energy efficiency to reduce electricity bills, and of course a design that elevates the aesthetic vibe of every room.
We explored fans and lights from several companies, but our attention was drawn to Havells, a name known for its quality, innovation, and customer satisfaction. From ceiling fans to smart LED panel lights and decorative chandeliers, every product reflected the premium quality.
The brand name “Havells”, along with its logo, taglines, and different branding style, is protected under the Trademarks Act, 1999. This Act ensure that no other company can use the Havells brand name or similar trademarks to mislead customers, So the company’s reputation and goodwill remain legally intact. And, the consumers like us can confidently choose products, knowing they are backed by a protected brand.
In taps and showerheads, we specifically chose fittings from Jaquar®, a brand known not just for its appearance, but for durability, water-saving technology, and customer service. The brand name and logo printed on every product, packaging box, and even on the handles themselves, is not just a mark of identity, it is a registered trademark protected under the Trademarks Act, 1999. The Act ensures protection of the name, logo, and tagline of the brand. The brand’s reputation, consumer trust, and goodwill remain protected.
3. THE DESIGNS ACT, 2000:
Havells is also stood out for its design innovation like for instance the ceiling fans with wooden blade, LED lights in geometric patterns, & floral designs that blend beautifully into modern interiors. These external visual features are protected under the Designs Act, 2000 as Industrial Designs. The company has exclusive rights over these designs, ensures that no one can copy the unique physical appearance of its fans or lights.
For taps and shower the external visual features the shape, configuration, and ornamentation are protected under the Designs Act, 2000 as Industrial Designs. As the taps have curved spouts, or black finishes, or vintage gold polish. This Design protection ensures that no competitor can copy the look of these taps or showers without permission. Consumers benefit from unique and elegant designs exclusive to that brand.
4. THE PATENTS ACT, 1970:
The company having BLDC technology in ceiling fans that ensure silent operation, to smart enabled fans and lights that can be operated via mobile apps or voice assistants or remote these products are often patented under the Patents Act, 1970. Some patented features include motion-sensor, fans with auto-regulation of speed based on room temperature, smart mood lighting systems that change colour based on time of day. Patents protect these functional innovations, granting exclusive rights to the company to use the invention themselves, also prevent others from copying the mechanism or feature.
As we moved further into completing the finer details of our home, it was finally time to design the bathrooms spaces where comfort and hygiene go hand in hand. We explored products from renowned sanitaryware and looked into companies like Jaquar, Kohler, Hindware, and Grohe, and we were amazed at how much innovation goes into something as simple as a tap or showerhead. We are getting amazed by each passing day like knowing that these everyday products can carry the weight of Intellectual Property protection.
The Modern tap and shower fittings has some features like auto-closing taps to prevent water wastage. Thermostatic mixers that balance hot and cold water perfectly. Touch-free that is sensor-based systems for hygiene. These features involve technical innovation, often protected under the Patents Act, 1970.
This Act protects exclusive rights to the inventor and company to use the technology. Legal protection against others making, selling, or using the same invention without consent.
5. THE GEOGRAPHICAL INDICATIONS OF GOODS ACT, 1999:
After the structure was completed, tiles chosen, lights installed, and bathrooms made functional it was finally time to add soul to the space: the furniture, art, and cultural essence that truly turns a house into a home. For this final stage, we intentionally chose traditional, artworks and handicrafts, many of which are protected under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Like for the main hall, we selected exquisite Mysore Traditional Paintings known for their rich colours, gold foil detailing, and mythological themes. Each painting are handmade by local artisans from Karnataka, reflected elegance and heritage. These paintings are protected by a GI tag, which confirms their origin from Mysore, Karnataka. Legally ensures that only genuine artisans from that region can label their art as “Mysore Painting”.
And for our dining area and lounge, we chose Sankheda furniture from Gujarat beautifully built wooden chairs and tables with vibrant, hand-painted patterns and bold colours. Made using old techniques passed through generations, these pieces added traditional charm and vibrancy to our space.
This furniture are protected under Geographical Indications, ensures the exclusive right of Sankheda artisans from the region of Gujarat to use the name.Legal protection against the mass manufacturers who are it is wrongly and falsely.
Conclusion
Building a home is not just about bricks it is about creativity, innovation, tradition, and that small personal touch of ours. Through every step of our journey from choosing branded tiles, to selecting GI-tagged artworks and customized blueprints we discovered how deeply Intellectual Property Rights are woven into the very fabric of our daily lives. This all about Intellectual properties in my dream house.
This experience has not only given us a home filled with beauty and meaning but also a deeper appreciation for the laws that protect originality, craftsmanship, and innovation.
Truly, understanding IPR has turned our dream home into a space where ideas are valued, and creators are respected.
Author
Nimisha Singh Kushwah, 3rd B.A.LLB, Institute of Law, Jiwaji University, Gwalior
The purpose of the Trade Marks Act, 1999 is to grant exclusive rights to a proprietors over their originally adopted and conceived mark while preventing any unauthorised use of such protected mark by anyone other than the original adopter and lawful proprietor. However, there are certain special circumstances in which the Trade Mark Act allows for the registration of identical or similar mark in respect of similar set of goods and services to more than one person.
This could be done only in extraordinary circumstances as enshrined under Section 12 of the Trademark Act, 1999. The said act allows multiple proprietor to obtain registration of identical or similar trademark in relation to similar goods and services in case of honest and concurrent use. Let’s understand this provision, its applicability and meaning in detail.
What is Honest Use under Section 12 Of The Trademark Act?
Honest use refers to a situation where a trademark has been adopted & thereafter used by a person in good faith and with bona fide intent. A mark is said to be honestly used when the mark has been independently adopted and used without knowledge of prior-existing identical or similar marks in the market. There is no intend to deceive anyone, cause confusion vis-à-vis any prior-existing mark or ride upon anyone else’s reputation.
What is Concurrent Use under Section 12 Of The Trademark Act?
Concurrent use refers to a situation where the identical marks are being used by two or more persons simultaneously & parallelly co-existing over a period of time. The law recognizes that there are certain circumstances like that of concurrent use which may not create confusion among consumers, especially if both businesses operate in different geographical areas or have different trade channels. Below is small and simple example of circumstances where the provision of Section 12 of The Trademark Act may be invoked.
Example: ‘A’, being a seller of tea in Assam, adopts & starts to use the mark ‘Turban Tea’ in its local business for 20 years, unaware regarding the prior existence & use of the same mark by another tea seller ‘B’ in Karnataka since the past 21 years. Here ‘A’s adoption and use of the mark ‘Turban Tea’ is both honest and concurrent.
Is Section 12 a Right or a Discretion?
Section 12 of the trademark act gives discretionary power to the Hon’ble Registrar to exercise in special circumstances of honest and concurrent use by allowing registration of similar or identical marks. Ld. Registrar has to decide this on case to case basis whether such extraordinary or special circumstances exist to exercise its discretionary powers under section 12 of the Trademark Act. The registrar has to be sufficiently satisfied regarding the Honesty and Concurrency of use to exercise its discretion. For this, the Registrar is at complete liberty to call upon the parties to present cogent and unimpeachable documentary evidence substantiating their claim of Honest & Concurrent use.
Even after being satisfied regarding Honesty and Concurrency of use, the registrar would check whether there are other special circumstances that justify allowing the use of similar marks like geographical differentiation i.e., marks being used in different geographical territories of India, established use of similar marks in the market that have created independent distinct identities despite the similarity.
After being satisfied regarding the grounds mentioned above, the Registrar, if it thinks fit, may allow the registration of identical or similar marks. However, whether such registration is absolute, limited or conditional also lays on the Registrar.
Conditions, Restrictions & Limitation under Section 12Of The Trademark Act
Section 12 of the trademark act empowers the Registrar to impose any condition, restriction or limitation over the registration of a mark as it deems fit. This right has been granted to the Registrar to remove any chances of potential confusion that might have arisen in the past or may arise in the future. Such any condition, restriction or limitation may include:
Limitation as to use in certain Geographical areas.
Restriction as to use in a relation to specific goods and services
Conditions regarding the manner of packaging/presentation of the marks to avoid confusion.
Landmark Cases on Section 12 of the Trade Marks Act, 1999
In this case, the Hon’ble Bombay High Court laid down 5 pre-requisites for grant of registration under section 12 of the trademark act i.e.,
a. The honesty of the concurrent use,
b. The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume and trade and to goods concerned,
c. The degree of confusion likely to follow from the resemblance of the applicants’ mark and the opponents’ marks.
d. Whether any instance of confusion have in fact been proved, and
e. the relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants’ mark is registered.
The Hon’ble Supreme Court, in this case held that, there is no requirement to establish no probability of confusion. The simple fact that there has not been a single instance of confusion throughout the years of concurrent use of both the marks is enough to take the benefit of section 12 of the trademark act.
Exceptions to Section 12 Of The Trademark Act:
There are however certain circumstances where even after fulfilling the criteria laid down under the express provision as well the judicial pronouncements surrounding section 12 of the trademark act, registration to a mark cannot be granted. Such exceptions to the applicability of section 12 of the trademark act involve the circumstances where one mark is a well-known mark, in the case of trademark squatting, where the prior user has the bona fide plans of expansion in the same field as the later adopted mark etc. Thus, exercise of discretion under section 12 of the trademark act there is no rule of thumb and has to be decided on case to case basis.
Conclusion: Section 12 of the Trademark Act
Section 12 of the Trade Marks Act, 1999, provides certain amount of flexibility for businesses that have used similar or identical marks in good faith. This section ensures that the efforts, time and money spent by businesses over the honest and concurrent use and adoption of their marks do not outrightly go into vain. However, the burden rests on the Registrar to strike a balance between allowing businesses to protect their established marks and protecting the rights of honest and concurrent users. It was the total overview of Section 12 of the Trade Marks Act.
