India: Establishing Honesty Of The Concurrent Use

Last Updated: 15 November 2012
Article by Kamakhya Srivastava

Delhi High Court in a trademark dispute has upheld the findings of Deputy Registrar (D.R.) of Trade Marks and Intellectual Property Appellate Board (IPAB). The Court dismissed the writ petition of Champagne Moet & Chandon (the champagne company), which objected the order of IPAB dismissing the champagne company's appeal against the order of the D.R. of Trade Marks rejecting its opposition to a firm adopting the name M/s Moets.


The French company Champagne Moet & Chandon is a manufacturer of Champagne (a sparkling wine) and holds Indian trademark registrations for the trademark MOET in Class 33 and MOET & CHANDON from 1982 and 1985 respectively.

M/s Moets is a Delhi based firm selling meat products and had applied for registration of the mark MOETS under class 29 (meat, fish, poultry and game and meat extracts) in 1986. The events and dates that follow are –

1989 – The trademark application of M/s Moets was advertised in TM Journal and the champagne company filed its opposition.

1995 – The D.R. of Trade Marks rejected the champagne company's opposition.

2004 – An appeal against D.R. order dismissed by IPAB. An appeal against the D.R. order was granted stay by the court in 1995 but after the enactment of Trade Marks Act 1999, the appeal was transferred to IPAB.

2006 – A petition filed by the champagne company to review IPAB's order was rejected.

Thereafter a writ petition challenging the orders of the IPAB and D.R. of Trade Marks was filed in 2006.


The Court did not find any perversity or anything contrary to the evidence in the concurrent determination on facts by the D.R. and the IPAB and therefore found itself not inclined to exercise its power of judicial review. Also, the champagne company did not pursue any ground interfering with the rejection of its opposition under the provision providing for prohibition of registration of marks, the use of which would be likely to deceive or cause confusion.


The rejection of the TM opposition filed by the champagne company and the subsequent dismissal of the appeal founded itself primarily on the inadequacy in evidence submitted by the champagne company and on the difference in the description of goods being dealt in by the parties. The High Court, while endorsing the findings of the quasi-judicial authorities said that the contention of a vital nexus between food and drink is an attractive one but the goods registered under class 29 and class 33 cannot be said to be of the same description. On the determination of facts against evidence led, the High Court and the quasi-judicial authorities were critical on the insufficiency of evidence submitted by the champagne company regarding prior user and attaining of reputation and goodwill of its mark in the territory. There was no evidence led before the D.R. to show that there has been an effort by the champagne company to built reputation for wines in India through the use of its mark and that M/s Moets built up its reputation in catering services by taking advantage of the reputation that it claims in respect of its wines which may have been served with food in the restaurant of M/s Moets.

It was found that the use of the mark MOETS was a significant part of its trading style / trade name – M/s Moets - and thus was not a dishonest use and adoption of the mark and therefore capable of being registered as honest and concurrent user.

Honest and Concurrent Use

Section 12 of the Trade Marks Act, 1999 provides for registration of a trademark in case of honest and concurrent use depending upon the subjective discretion of the Registrar.

The burden of proof under the evidentiary aspect of trademark law says that an applicant needs to establish prima facie contentions that there is no such person using an identical or similar mark, as it is not possible to show conclusively that there is no such person. The registrar may take notice of a state of affairs that would enable it to raise a presumption that according to "the common course of natural events, human conduct, and public and private business" such a situation does not exist. However, if an objection is raised such a presumption would not be raised. Then the burden is on the objecting person to prove his case in accordance with the principle of section 101 of the Evidence Act, 1872 and he must also prove that the registration of the mark would be of material detriment to him. In Concurrent registration of identical or similar marks, heavy burden lies on the applicant to prove the existence of the following conditions, the findings on which are necessarily subjective in nature.

  1. The quantum of the concurrent use of the trademark in connection with the goods concerned and the duration, area and volume of the trade.
  2. The degree of confusion likely to ensue from the resemblance of the marks, which is to an indication of the measure of public inconvenience.
  3. The honesty of the concurrent use
  4. Whether any instances of confusion have in fact been proved.
  5. The relative inconvenience, which would be caused if the marks were registered, subject if necessary to any conditions and limitations.

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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