Tuesday, October 14, 2014

Judgement on ‘Honest Concurrent Use’ (Bombay High Court: [ITM Trust & Ors. vs Educate India Society])

Bombay High Court Judgement Gautam patel
Full text of the Bombay High Court Judgement can be found here.

For Plaintiffs: Mr. Aspi Chinoy, Senior Advocate a/w Ms.  Chandana Salgaoncar, Aditya Thakkar i/b Vigil Juris.
For Defendant: Mr. Arvind Chaudhary, i/b Amol Deshpande.
Coram                                                 : G.S.Patel, J.
Judgment Reserved on                       : 16th July 2014
Judgment Pronounced on                   : 15th September 2014

Brief Facts:
The Plaintiffs consisted of a public charitable and educational trust registered under the Bombay Public Trusts Act, 1950 and its trustees. Till 1991, the Plaintiffs trade mark was "INSTITUTE FOR TECHNOLOGY & MANAGEMENT" in a certain curved/spherical form around a circular device along with another device of a shield at the middle. The Plaintiffs claimed that the trademark was in use since 1993. In June 2010, the Plaintiffs filed an application for registration of the mark "ITM-University" in Class 41, on the pretext that it was in continuous and uninterrupted use since 2002.

A student seeking admission to the Plaintiffs' Institute for Technology & Management informed them that there was a recent blog about the closure of "ITM Gurgaon" and alleged misappropriation at that institute. This institute was in no way connected with the Plaintiffs, who had no establishment in Gurgaon. It was the Plaintiffs case that they only knew of the Defendant’s institute in 2010. On 31st March 2010, the Plaintiffs’ advocates, sent a legal notice to the Defendant in respect of use of the said mark.
The next day, i.e. 1st April 2010, the Defendants filed an application for registration of the mark "ITM University" in class 41, on the ground that it was proposed to be used. The Defendants, vide their advocates, replied to the Plaintiff’s advocate’s said legal notice. The Defendants alleged that they had been using the name "Institute for Technology and Management" since 1996.

A Single Judge of the Hon’ble Bombay High Court dismissed the Notice of Motion on the ground that the marks were dissimilar. The Defendant’s plea of honest and concurrent user was not considered. In appeal, the order of the Single Judge was set aside by consent and the matter was remitted only for the consideration of the plea of honest and concurrent user, in respect of Section 12 of Trade Marks Act, 1999:
“Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.”

The concluded that the expression ‘ITM’ was being used as an acronym.
“Now the averment of "ITM" being an acronym, and of it being used as an acronym or abbreviation, is one that, as Mr. Chinoy correctly said, ousts any plea of honest and concurrent user of the word as a trade mark. In the very considerable material placed by the Defendants, there is no evidence such use, i.e., of the expression "ITM" as a trade mark. Its only use seems to be as an acronym.”
It was an admitted fact that the Defendants themselves applied for registration of ITM as a mark only on 1st April 2010. Furthermore, on that application, the Defendant was informed of the Plaintiffs’ prior registration. Thus, the Court held that two results must follow: there is no material to show use from 1999 as claimed, and further that any use after April 2010 is not ‘honest’ since the Defendant was made aware of the Plaintiffs’ prior mark existing on the Register of Trade Marks. Hon'ble Justice Gautam Patel also stated that it was important to note that in the application of 1st April 2010, the Defendant said that the mark of which they sought registration, “ITM University”, was proposed to be used.
Thus, the motion succeeded. Pending the hearing and final disposal of the suit, the Defendant by themselves, and their agents and employees, was restrained from using the mark “ITM” or any other deceptively similar mark in respect of technical and educational services so as to infringe the Plaintiffs' registered trademark "ITM" or pass off (or enable others to pass off) the Defendants' services as those of the Plaintiffs.


Keywords: Section 12 of Trade Marks Act, 1999, Bombay High Court, indiankanoon, Honest and concurrent use, passing off, ITM Trust & Ors. vs. Educate India Society, passing off, intellectual property, IPR,  Hon'ble Justice Gautam Patel intellectual property, IPR, latest Indian Intellectual Property Cases, passing off, trade marks act, trademark, trademarks, 


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  2. Correct, though, the adoption of any trademark at the outset by acronym or abbreviation, but once it is already adopted by the previous party for many years and subsequently registered. Thereby, no party can do the same, in complete awareness of existence of mark, which is previously registered and used

  3. Good coverage and interpretation of the law. The matter of fact is that , once the adoption of any trademark at the outset by acronym or abbreviation, but once it is already adopted by the previous party for many years and subsequently registered. Thereby, no party can do the same, in complete awareness of existence of mark, which is previously registered and used. Educate India society found placing inconsistent statements of adoption and usage at various places and with various dates like 1996, 1999 and 2002, but failed to file any concret documents, if any the previous adopter and consistent user rights are already protected by the court, which can't be questioned.

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