Facts : The person is carrying out a business of Spa for the past 6 months by the name of

Sapta Spa and now he wants to register it. But as it turns out the name Sapta Spa has already
been registered as a Word Mark in the same city and in the same class. So can a trademark be
registered over this wordmark?

Legal Reasoning:
Trademarks in India can be registered in different forms namely word mark, label, logo and
device mark. A word mark registers the word itself one would want to use and renders stronger
and wider protection to ones business. Once a trademark is registered for a word mark, the
applicant has the right to use and represent the word in any format or font which grants it wider
protection including exclusive rights to the word as a whole and depict it in various formats
regardless of its style for all the goods and services in respect of the mark.
Since the Trademark has already been registered which is the same as to what we intend to
register, the logical course to adopt would be to file a trademark under Section 12 of Trademark
Act which reads out as:
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.
This provision means that the Registrar will allow an application which conflicts with an earlier
mark under Section 11(1) or 11(2) to be published for the purposes of opposition if the applicant
can demonstrate that they have built up a sufficient amount of goodwill or common-law right in
their mark. To demonstrate honest concurrent use, the applicants mark must have had sufficient
visibility or exposure for the owner of the earlier right to have become aware of that mark so that
a challenge could have been mounted.

These principles were recently upheld by the Division Bench of the Delhi High Court at the
interim injunction stage, in Goenka Institute of Education and Research v. Anjani Kumar
Goenka & Anr. 2009 (40) PTC 393 (Del.)(DB) while quashing the order of Single Judge bench
of the same court. It was contented by the appellants that the word Goenka has been used as
trademark even prior to the use by the respondent, who claimed exclusive rights over it in respect
of their educational institutions. The appellant asserted that Goenka being a common surname
is per se not distinctive. The respondents had been using the trademark before the appellants
started to and had even got the same registered in 2005. They argued that the use of the same
name in respect of educational institutions would mislead the public into thinking that the
services of defendant are originating from the plaintiffs. The single judge had held in favour of
respondents, holding the appellants liable for passing off. It also said that the user of the third
person was not relevant to the issue of ownership and allowed injunction in favour of the
respondents.
The Appellate Court had to decide on the issues of:
1. Honest concurrent use
2. The effect of others use of the word Goenka in respect of educational institutions and
consequent dilution of distinctiveness
3. The name Goenka being publici juris.
In deciding upon honest concurrent use, the court brought attention to the fact of absence of mala
fide intention in adoption of the trademark. The court held that in the present case, the adoption
was indeed honest. In relation to the second issue, the court remarked that there was no deceptive
similarity and the two institutions were based in different cities. However, since the education of
students was involved, in order to ensure that they are not lead into the belief that the two
institutions spring from the same source; the court directed the appellant to take steps to add such
information of disclaimer or maintain sufficient distinction between the names of schools of
appellants and respondents. They were also supposed to add the name of their trust in brackets
below the school name, as also on the promotional material and literature of the school and
mention categorically that they were not affiliated to any other institution using the name
Goenka as a trademark or trade name. On the third issue, the court said that it could not
authoritatively hold the name to have become publici juris at the interim stage on the strength of

the documents placed before it. It was left open to be proved by the appellant at the trial. Neither
party was held to be the first user of the trademark, so as to be able to prevent third parties from
using the same.

Conclusion:

Despite the fact that Section 12 allows an unregistered user of the mark to register the

same under Honest and Concurrent use where the mark in question has already been registered, for

a registration to be allowed under the same the applicants mark must have had sufficient
visibility or exposure for the registered owner of the mark to have become aware of that mark so
that a challenge could have been mounted. For this reason, a period of less than five years before
the date of application is not usually viewed by the Registrar as being a sufficient length of time
for such exposure to have occurred.
And since the fact of the case is as such the applicant has only began his business for more or
less past 6 months, a claim under Honest and Concurrent use is bound to fail.

However since the Trademark registry shows that the alleged Trademark has only cleared the
Formalities Check Pass which means only the basic formalities has been met and after
formalities check, the trade mark application still has to undergo substantive examination, where
objections may be raised under Sections 9 and 11 of the Trade Marks Act, 1999.

Therefore under Section 11 (3) we can oppose the registration of Sapta Spa by the opposite
party. Section 11(3) reads out as:
A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented
1) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or
2) by virtue of law of copyright.
In the case of Casio India Co. Ltd. v. Ashita Tele Systems Pvt. Ltd. the court held that in
a passing off action it is not incumbent upon the plaintiff to prove any actual sale or any
particular act of deception, mere likelihood of deception, whereby an average person is likely to
be deceived or confused is sufficient to entertain an action for passing off.
The Supreme Court in Durga Dutt vs. Navaratna Pharmaceutical set out the distinction
between infringement and passing off. The distinctions are:

1) The action for infringement is a statutory remedy conferred on the registered owner of a
registered Trade mark and has an exclusive right to the use of the trade mark in relation to
those goods. And the passing off is available to the unregistered goods and services.
2) The second most important point is that the use by the defendant of the trade mark of
the plaintiff is not essential in an action for passing off, but in the case of an action for
infringement this will not applicable.
So the remedy we have is opposing the registration of Sapta Spa by the opposite party once
it is published in the Journal as the Act allows opposition of Registration of Trademark by
filing a notice within 4 months of such a publication (Sec 21).
After which we file for registration of the same.