Abstract
This article critically examines the doctrine of honest concurrent use under Section 12 of the Trade Mark Act, 1999, in the context of India’s developing digital marketplace. The doctrine was introduced to recognise circumstances in which similar trademarks, adopted honestly and used concurrently, can exist together to avoid consumer confusion. Historically, the judicial application of the doctrine has been influenced by honesty of adoption and the nature of the marketplace. These legal standards were developed during the geographically segmented, brick-and-mortar commerce.
The rapid emergence of the digital economy, e-commerce platforms, online marketplaces, and search engines has brought fundamental changes in consumers’ encounters with trademarks. The rationale that was used to guide Section 12 is based on the assumption that traditional businesses operated in different regional places with limited consumer interaction, is now being challenged. This article argues that although the doctrine of honest concurrent use continues to be relevant, there is a need to reinterpret the application to overcome the challenges posed by increased digitalisation.
By analysing the structural framework of Section 12 with the help of court rulings and contemporary developments, the paper evaluates the adequacy of the existing legal framework of the concurrent use doctrine to address modern problems. The article concludes by stressing the continuous purpose of the doctrine but presenting a more contextual application to preserve the balance between trademark protection and consumer interests in an increasingly digitalised space.
- Introduction
Honest Concurrent Use (HCU) doctrine has been defined in Section 12 of the Trademarks Act of 1999. It allows one or more proprietors to register identical or similar trademarks in an honest and concurrent manner. The provision provides for a peaceful coexistence of two similar trademarks on the premise of innocent, geographically isolated adoption.
With the onset of the internet revolution, the nature of marketplaces, especially e-commerce, has transformed significantly. The fundamental assumption used to evaluate the honesty of adoption is being blurred by the increasing penetration of the internet in the form of e-commerce, online advertisements, and search engines. Resultantly, the trademarks that once co-existed in separate regions peacefully are now just a search away. Thus, the question raised is whether the present doctrine that was shaped under the Brick-and-Mortar marketplace can still be applied in a borderless architecture of marketplaces.
Although the rationale underlying Section 12 remains sound, the article critically reexamines its contemporary utility with the changing dynamics of trademark coexistence. As regional boundaries are becoming less significant in online commerce, new challenges have emerged for HCU. Thus, the question that stands before Indian courts is not of the similar marks co-existing, but whether the factors that formed the basis of HCU are still appropriate in a borderless digital marketplace.
With the help of new judicial interventions, including KEI Industries Ltd v. Raman Kwatra (2022) and Sumit Vijay v. Major League Baseball (2026), this paper studies how the digitalised economy has complicated the traditional basis of the doctrine. Lastly, it argues the importance of adjusting, and not revamping the entire purpose and application of Section 12 by putting less reliance on geography, more attention to notice, platform-enabled expansion, and concrete efforts to avoid customer confusion.