Section 11 of the Trademarks Act, 1999 talks about identical or similar marks. It states that if a new trademark that has come to the registrar for registration is similar to an already registered trademark then in that case that new trademark cannot be registered. A trademark is still considered to be identical or similar if it has minimal not so significant differences that can’t be distinguished.
There are certain bullet points that are taken into consideration for comparing two marks for similarity as it is not so easy to come up with a catchy and unique trademark name:
- A normal person’s ability to distinguish between two products, i.e. imperfect recollection;
- The issue as to whether there is any likelihood of confusion in telling the marks apart with respect to their phonetic, visual and structural identity; and
- The very basic essential in doing the comparison between two marks is that the products are to be compared as a whole and not broken down and then compared.
In the case of Larsen & Toubro Ltd. v. Lachmi Narain Trades & others, It was held that “field of activity” being different is no longer applicable as the main aspect in comparison of two trademarks is the very likelihood of confusion in telling them apart. In this case, the mark used by the plaintiff was “L&T” and the defendants were using names such as “ELENTE” and “LNT”. The plaintiff brought up a case for passing off and filed for an interim injunction but the defendants argued that “LNT” was nothing more than an abbreviation of their business, i.e. Lachmi Narain Trades, but the appellate court reversed the lower court’s judgment in favour of the plaintiff ordering an interim injunction against defendants for not using such names as it was bound to interfere in the plaintiff’s business and gain goodwill in their pretense.
Section 12 of the Trademarks Act, 1999 is an exception to section 11 as under this section one can apply for trademark even if a similar or identical trademark already exists. The decision power resides with the registrar who decides whether there has been an honest or concurrent use of the trademark by the defendant.
Following the foreign judgments like Dent v. Turpin and Southorn v. Reynolds, the very first case that laid law with respect to this exception was Kores (India) Ltd. v. M/S Eshwarsa and sons This case gave certain factors to be considered:
- How much was the extension of utilization of area, quantity and time duration?
- Whether the trademark was honestly used concurrently?
- What is the degree of confusion between marks which can cause inconvenience to the public?
- What are the available evidences to prove the inconvenience and confusion?
- If supposedly, the honest and concurrent use of the trademark is allowed to the party then what would be the relative inconvenience to the other party? Or what if such exception was not allowed, then, how would it affect both the parties relatively?
A landmark case where the defense of honest and concurrent use was permitted was the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and others It was held that even if both the parties had started using the same name “Goenka”, still there no very less probability of people getting confused since one party was in New Delhi and the other was in Rajasthan.
 Larsen & Toubro Ltd. v. Lachmi Narain Trades & others, 2008 (36) PTC 223 (Del) (DB).
 Dent v. Turpin, (1861) 2 John & H 139.
 Southorn v. Reynolds, (1865) 12 LT (NS) 75.
 Kores (India) Ltd. v. M/S Eshwarsa and sons, 1985 (1) BomCR 423.
 Goenka Institute of Education and Research v. Anjani Kumar Goenka and others, 2009 (39) PTC 720 (Del.).