Bom HC judgment on ‘honest concurrent use’

Justice G.S. Patel of Bombay High Court, in his recent judgment in ITM Trust & Ors. V. Educate India Society, examined the ambit of ‘honest concurrent use’ in Trade Marks Act, 1999.

Brief Facts

The 1^st Plaintiff, which is a public charitable and educational trust, controls and manages Institute of Technology & Management. It is the registered owner of word mark “ITM” which falls in various classes.  The Plaintiffs claim to be rendering services since 1993.

When the Plaintiffs came to know about the usage of identical mark by the Defendant in 2010, they sent legal notices denouncing the same. The Defendant claimed that it was using the name “Institute for Technology and Management” since 1996. It also claimed that ITM was an abbreviation over which the Plaintiffs could assert no exclusivity. The Plaintiffs’ attorneys’ responded with another cease and desist notice. Meanwhile, the Defendant applied for registration of the mark “ITM University” with the logo in class 41, saying that the user was ‘proposed’.

The matter finally reached the Bom HC. The Single Bench of the Bom HC dismissed the notice of motion (alleging passing off and infringement) on the ground that the marks were dissimilar. As the contesting marks were found to be dissimilar, the Defendant’s plea of honest and concurrent user was not considered. The matter went in appeal.  The Single Bench Order was set aside by consent and the matter was remitted only for the consideration of the plea of honest and concurrent user. 

As the Court referred to the averments made by the Defendant, I shall reproduce the relevant parts of the same:

“13. I state that the defendant’s honesty of adoption of the mark ITM is proved from the factum that the Trade Mark “ITM” is an acronym derived from the first three alphabets of the abbreviated format of its earlier name, “Institute of Technology and Management” when the Defendant was running an affiliated college created in 1995-96, duly approved by the statutory bodies such as the All India Council for Technical Education (AICTE), State Government and the affiliated University. The said acronym, “ITM” has been derived from the first alphabet of each of the words of “Institute of Technology and Management”, which is a common practice with respect to educational institutes across the country and is not only peculiar to the defendant. For example, Indian Institute of Technology is called IIT and Indian Institute of Mangement is called IIM….Thus, the defendant is the prior authorized user of the trademark “ITM University”.”

Principle of law

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.”

Judgment

The Court considered various documents presented by the Defendant and concluded that the term is used as an acronym. As the Court observed, “there is nothing in this morass of material to show the use of the word “ITM” as anything other than an acronym; certainly there is no use of it as a trademark.” (paragraph 18)

Further, “the averment of “ITM” being an acronym, and of it being used as an acronym of abbreviation….ousts any plea of honest and concurrent user of the word as a trade mark. In the very considerable material placed by the Defendant(s), there is no evidence such use, i.e., of the expression “ITM” as a trademark. Its only use seems to be as an acronym. There is certainly no material to evidence use of any kind since 1999. Its only use seems to be as an acronym. There is certainly no material to evidence use of any kind since 1999. In addition, it is not in dispute that the Defendant(s) themselves applied for registration of ITM as a mark…only on 1^st April 2010. On that application, the Defendant(s) were informed of the Plaintiffs’ prior registration. Consequently, two results must follow: there is no material to show use from 1999 as claimed, and any use after April 2010 is not ‘honest’ since the Defendant(s) were made aware of the Plaintiffs’ prior mark existing on the Register of Trade Marks. Equally important is the fact that in the application of 1^st April 2010, the Defendant(s) said that the mark of which they sought registration, “ITM University”, was proposed to be used.” (paragraph 19) The Court also inter alia noted that the proforma diploma certificate issued by the Defendant didnt carry the mark/logo “ITM”. If it was indeed the logo/mark, then an official document like the certificate would have carried the same.

Finally, “I believe Mr. Chaudhary’s formulation to be faulty and self-defeating. If, as he says, the term “ITM” is only used as an abbreviation, then there can be no claim of “honest and concurrent user”, for the latter claim only arises in the context of use of a term or expression as a trade mark.”

As the Defendant failed to prove honest and concurrent use, the motion succeeded. Pending the hearing and final disposal of the suit, the Defendant (and its 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 the Defendant’s services as those of the Plaintiffs.

Comments

Sr. Advocate Aspi Chinoy, who represented the Plaintiffs, successfully argued that the Defendant used “ITM” as an abbreviation and not as a mark/logo. While acronyms can become marks, acronyms ipso facto do not become marks. I would like to flag something here. The Court referred to some of the averments of the Defendant. [See the underlined sentences in the averments reproduced above.] As I gather from the averments reproduced above, the Defendant argued that its honesty can be deduced from the fact that its logo/mark was derived from the name of the institution. A negative conclusion cannot, therefore, be drawn against the Defendant on whether or not the acronym was a logo / mark (from the underlined averments alone). I am, however, unsure whether the Defendant argued elsewhere (in their averments) that the acronym carried the characteristics of a mark / logo. Either ways, the Defendant failed to convince the Court that the acronym was indeed used as a mark / logo.