One may refer with advantage to Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448. SC held: High Court failed to take note, plea of ‘honest and concurrent user’ as stated in Section 12(3) of The Trade and Merchandise Marks Act, 1958 is not a valid defence for infringement of copyright.
Afore-extracted finding is, in my considered opinion, an authority. The Trade Marks Act, 1999 envisages ‘honest and concurrent user’ only as a ground on which concurrent registrations of similar or identical marks could be granted by Registry of Trade Marks. There is no provision in The Trade Marks Act, 1999 which contemplates ‘honest and concurrent user’ as a defence to a charge of infringement of trade mark. Where a case of infringement is made out, injunction has to necessarily follow.
On facts, I have found a prima facie case of infringement of Kei Industries Ltd.’s registered trade marks.
– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Kei Industries Ltd. v. Raman Kwatra, [I.A. 287/2021 in CS (COMM) 9/2021].
It brooks very little disagreement to say, ‘honest concurrent use’ is not so much a provision under The Trade Marks Act, 1999 as it is a principle. The principle of ‘honest concurrent use’ is regularly evaluated as part of a general defence to trade mark infringement. It ought to be impossible to miss instances where ‘honest concurrent use’ has been deployed within infringement frameworks. They emanate from diverse sources: Delhi, Bombay, and Kolkata High Courts… To endorse ‘honest concurrent use’ has no application as an infringement defence is to effectively set all this case law to one side.