India: No Claim for Damage of Reputation in Case of Honest Concurrent Use

Last Updated: 27 July 2010

Similarity of marks is an issue that trademark law in India has consistently dealt with over time, thus evolving crucial principles. As per judicial dicta, there should be only one trademark, one source & one proprietor. Thus, it is neither permissible nor advisable to use a mark similar to a registered mark. The foremost criteria used by authorities to make out a case of similarity or deceptive similarity, is whether any confusion would be caused in the mind of an unwary purchaser (a common prudent person) However, Courts as well as the trademark legislation has allowed use of similar marks, where the mark has been adopted honestly and bona fide, and has been used for a sufficiently long period of time. The time period for the use of the mark to be considered as one under honest and concurrent use is undefined in the Act, however judicial pronouncements have rendered a minimum period of 5-6 years to qualify such use. .

In the Delhi High Court very recently in the case Star Bazaar Pvt Ltd vs. Trent Ltd the issue of honest and concurrent use have come for deliberation. A company named "Star Bazaar Pvt. Ltd." (Plaintiff) carrying on business of retail in the name and style of "Star Bazaar" in a departmental store at South Delhi area came to know by an advertisement published in the Daily English Edition of the Bombay Times, The Times of India, that the company named Trent Ltd (Defendant) is using" Star Bazaar" the trade mark "Star Bazaar" of the Star Bazaar company in Mumbai (Andheri). Later the search revealed that the Trent company is also using trade name "Star Bazaar" in Ahmedabad and Bangalore, and very soon is going to open a new store in the outlets of Delhi .

Star Bazaar company has filed a suit for permanent injunction and for claiming damages on the ground of passing off and prayed for restraining the other party to the suit from using trade mark "Star Bazaar" as it is an invented and coined word of Star Bazaar company which cannot be used by anyone else. Star Bazaar contended that the other party to the suit is a very big monopolistic house associated with TATA limited and the Star Bazaar company has being buying various goods of the other party to the suit off the shelf and on counter from its retail showrooms, therefore the other party to the suit should have constructive knowledge of the trademark of Star Bazaar company. It has been further contended that the other party to the suit has dishonestly adopted the trademark "Star Bazaar", and this deception and confusion is bound to result into the loss of the Star Bazaar company as its customers are likely to believe that the goods being sold by "Star Bazaar" of the Trent company were originating from the house of Star Bazaar company as the trade channel of both the parties were same.

The Trent company has given all the details of its advertisements cost and figures and records of sale from financial year 2004 to 2008, it has also given the details of all its stores existing in various parts of the country. The Trent Company being a TATA enterprise and the goodwill acquired by it, was based on high quality of goods and services associated with TATA group, and the other party to the suit cannot claim exclusivity in the respect of the name "Star Bazaar" any where in India and further contended that it was the Trent company who has coined the word "Star India Bazaar" and later "Star Bazaar" for its hyper market stores and also made applications to the trademark registration authorities for its registration, and the said trademark is a registered one in the name of the Trent company since 2003.

The court after hearing both sides view held that Trent company doing its business in the name of "Star India Bazaar" and later on "Star Bazaar" in 2007, there is no evidence that shift of the defendant from 'Star India Bazaar" to "Star India" was because of goodwill being enjoyed by Star Bazaar company in Delhi. Further the court, also mentioned that the trademark of Trent company could only have been registered after it was being advertised in trademark journals inviting objections, but it seems that the other party to the suit has no knowledge of it nor it had intentions to get it's own trade name "Star India", it did not took into notice of trademark of other party and started its business under same trade name. It is therefore a case of concurrent use of one trademark by two parties in two different parts of the country, unaware of each other. Hence the application stands disposed off.

© Lex Orbis 2009

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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