Defense of Honest and Concurrent Use Unavailable for Trademark Infringement?

In a recent decision, the Delhi High Court ruled on the scope of honest and concurrent use under the Indian trademark law.

In a recent case filed by a plaintiff claiming rights in the KEI mark, the defendant contended that it has used the KEI mark in relation to electronic goods since the year 1966. The plaintiff refuted this claim.

The court held that since the marks and the rival goods are similar, any use of the KEI mark by the defendants would amount of infringement. Further, the court noted that the defendant, while updating its mark over the years, removed the main feature of its erstwhile KEI KWALITY mark, i.e., the reference to Kwality Electrico India and merely retained the letter combination KEI thus rendering the rival marks identical.

More pertinently, the court ruled on the aspect of honest and concurrent use in this case and held that honest and concurrent use cannot be a defense to infringement and that the section envisaged under Indian trademark law is only applicable to application for registration of the mark. Thus, the court noted that the plea of honest and concurrent use by defendant, even if it exists, is not statutory envisaged as a ground on which a plaintiff, whose marks have been infringed, can be denied an injunction.

This judgement takes a different view on honest and concurrent use being available as a defense to action for infringement. While such a judgement is quite helpful from the view of a plaintiff who has invested tremendous amounts of resources in promoting and using its marks, it will be interesting to see how defendants who have honestly conceived their trademarks will now be able to defend use of such trademarks.