20 October 2014

Use as trade mark sine qua non to claim honest concurrent use

The Bombay High Court vide its judgment dated 15th September, 2014 in ITM Trust v. Educate India Society [see end note 1] granted an injunction in favour of the plaintiff, ITM Trust, against the defendant, Educate India Society, from using the mark "ITM" or any other deceptively similar mark in respect of technical and educational services so as to infringe ITM Trust's registered trade mark "ITM" or pass off its services as those of ITM Trust’s.  The Single Judge held that the defendant had failed to show any use of the mark "ITM" as a trade mark, instead observed that their use of the mark was in the form of a common abbreviation and thus held that they could not assert honest concurrent use in respect of said mark under the Trade Marks Act, 1999 (“the Act”). At the request of the defendant,  the operation of the above order as stayed for a period of six weeks from the date of said order.


Factual background

The plaintiff filed a suit for trade mark infringement combined with a cause of action for passing off before the Bombay High Court, with respect to its registered trade mark "ITM" under Class 41 (educational services). The plaintiff-trust is a public charitable and educational trust running a technology and management educational institution since 1991. In 1993, the plaintiff began using the mark "ITM" in connection with its services and obtained trade mark registration for the same under Class 16 (stationery, printed matter, publications etc.) in 2000 and under Class 41 in 2004 showing use since 1993. It was asserted by the plaintiff that they learnt of the defendant's use of the mark "ITM University" on 18th March, 2010 and registration of said mark was applied for on 1st April, 2010.

The defendant-society also runs an affiliated college established in 1995-96 and obtained registration of the mark "Institute of Technology and Management" in 1996, however, it is pertinent to note that the word "ITM" did not appear on the registered trade mark. Further, they also obtained registration for a device of a shield under Class 16 in 2007 consisting of the words "Institute of Technology and Management" and "ITM".

An earlier Notice of Motion moved by the plaintiff was dismissed by the Single Judge by order dated 20th July, 2012 on the ground that the contesting marks were dissimilar. Further, the defence of honest concurrent use by defendant was also rejected. The plaintiff appealed against said order of the Single Judge. The question of deceptive similarity of the marks was settled by an agreement between the parties that the marks in issue were identical. Hence, in the instant case the issue was whether the defendant could continue to use the mark "ITM University" under the defence of honest concurrent user under Section 12 of the Act.


Arguments advanced

The plaintiff argued that the defendant's registration under class 16 for the mark "Institute of Technology and Management" dates back to 2002 and that in 2010 they applied for a registration of the mark "ITM University"; therefore there was no evidence of any prior use of the mark "ITM" by Educate India Society, whereas, the plaintiff had demonstrated use since 1993.

The defendant contended that their honesty in adoption of the mark "ITM" was derived from the fact that "ITM" was an acronym obtained from the first three alphabets of the mark "Institute of Technology and Management".  Further, it was also asserted that it was a common practice for educational institutions to adopt acronyms and cited examples such as Indian Institute of Technology (IIT) and Indian Institute of Management (IIM). Therefore, the defendants asserted that the conditions under Section 12 of the Act were satisfied and that they should be permitted to use the mark "ITM University". Section 12 of the Act states, that the Registrar may permit the registration by more than one proprietor, of marks that are identical or similar in respect of same or similar goods or services, provided honest concurrent use of said mark is demonstrated.


Decision and reasoning

The Single Judge primarily observed that the defendant did not have a registration specifically for the mark "ITM". Further, the avowed use of the term "ITM" was an acronym and not as a trade mark per se.  The judge also took into consideration the evidences in the form of government approvals granted to the institution run by the defendant which also referred to "ITM" as an acronym rather than as a trade mark.

With respect to the application by the defendant for the mark "ITM University" in April 2010, the judge observed that at the time of such registration, they were informed of ITM Trust's registration in the mark "ITM".  The Single Judge held that in order to be able to use the mark "ITM University", which is essentially "ITM" as the word "university" cannot be registered under the Act; defendants had to show use since 1999 i.e. prior use and  any evidence of use after April 2010 would not be considered honest concurrent use. The brochures pertaining to the defendant’s educational institution adduced as evidence, which highlighted that the diploma in economics offered by them did not make any mention of the mark "ITM", and consisted of the shield bearing the mark "Institute of Technology and Management". This, the court held to be an indication that defendant never intended to use the mark "ITM" as a trade mark.

With respect to the issue of prior use of the mark "ITM", the court held that the only registration of defendant that was prior in time as compared to ITM Trust's 2004 registration under class 41, was with respect to the mark "Institute of Technology and Management" in the year 1996 which did not consist of the term "ITM". Further, the application for registration of the shield bearing marks "Institute of Technology and Management" and "ITM" although made in 2002, was under class 16. It was, therefore, held that the defendant had failed to establish prior use of the mark "ITM" specifically for educational serviced under class 41.

The court observed that on the one hand defendant averred that the mark is a mere acronym while at the same time it sought registration for the same as a trade mark. The Judge held that the above two circumstances cannot co-exist. The court thus held that, since the defendant was not able to demonstrate use of the mark "ITM" as a trade mark or that such use was made since 1999 they are not entitled to the defence of honest concurrent use. Essentially, the court reiterated that the defence of honest concurrent use applies only to use of the mark as a trade mark and not merely as an acronym or otherwise.



Regarding the interpretation of the terms "honest concurrent use" under Section 12 of the Act, the Supreme Court has already laid down in London Rubber Co. Ltd. v. Durex Products [see end note 2] 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. The instant case touches upon a fundamental tenet of trade mark law that the use of any mark must be to serve as an indication of origin of certain goods or services from a proprietor and not merely for matters of reference in the form of abbreviations or acronyms. Furthermore, 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. In the instant case, the defendant had failed to establish any use of the trade mark in terms of serving as an indication of origin of services, but used it merely as an acronym and thus, the court rightly denied the defence of honest concurrent use under Section 12 of the Act.

[The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]

End Notes:

  1. Notice of Motion No. 310 of 2012 in Suit No. 284 of 2012 (MANU/MH/1636/2014)\
  2. (1964) 2 SCR 211


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