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The plaintiff is the registered proprietor of the trademark BILTEN under trade mark No.4246358 in Class 5. By this suit, the plaintiff seeks to restrain the defendant from infringing its registered trademark by using the trademark BELATIN or any other trademark deceptively similar to the plaintiff's registered trademark and from passing off its products under the trademark BELATIN as the plaintiff's products. In addition, the plaintiff seeks the surrender of infringing material, rendition of accounts and a decree for profits in terms thereof.

17. Learned counsel for the defendant then contended that the defendant is entitled to protection as an honest and concurrent user even if the defendant commenced use of the trademark BELATIN shortly after the plaintiff's first use of the trademark BILTEN. By referring to Section 12 of the Trade Marks Act, 1999 (the TM Act), learned counsel submitted that an honest and concurrent user is entitled to register an identical or similar trademark even in respect of identical or similar goods or services. A fortiori, he submitted that honest and concurrent use qualifies as a defence in an infringement and passing off action. In support of this proposition, he relied on the judgment of the Delhi High Court in Lowenbrau AG and another v. Jagpin Breweries Limited and another, order dated 14.01.2009 in I.A. Nos. 11355/2007 and 13772/2007 in CS (OS) No.1810 of 2007 (Lowenbrau) and the judgment of the Bombay High Court in Vanita Dilip Chawla v. Fresh Meals India Private Ltd. And Ors, Notice of Motion No. 195 of 2010 https://www.mhc.tn.gov.in/judis  C.S.(Comm.Div.) No.232 of 2020 in Suit No.117 of 2010.

https://www.mhc.tn.gov.in/judis  C.S.(Comm.Div.) No.232 of 2020 Honest and concurrent use

25. This leads to the question whether the defendant is entitled to protection in an infringement action as an honest and concurrent user. Before examining whether such protection is available under the TM Act, it is necessary to examine whether the defendant's use was honest especially because the answer to this question would also be material in considering both the relief of passing off and damages. The defendant pleaded that it conceived of and adopted the trademark BELATIN in May 2019. As evidence thereof, email communications between 08.05.2019 and 30.05.2019 were exhibited collectively as Ex.D2. Ex.D2 discloses that a search was conducted in the trademarks registry to ascertain whether similar trademarks exist on the register. The trademark application dated 22.06.2019 was also exhibited as Ex.D3 and this was admittedly prior to the plaintiff's application dated 25.07.2019 for registration of the trademark https://www.mhc.tn.gov.in/judis  C.S.(Comm.Div.) No.232 of 2020 BILTEN (Ex.D4). The defendant has also placed on record the purchase order issued to its manufacturer on 12.09.2019 (Ex.D7), the licence issued for the manufacture of BELATIN (Ex.D8) and the invoice issued by the manufacturer on 31.10.2019 (Ex.D9). All these exhibits pre-date commercial use of the plaintiff's trademark, and establish that the defendant's adoption was honest.

(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his, whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of https://www.mhc.tn.gov.in/judis  C.S.(Comm.Div.) No.232 of 2020 the registration of the first-mentioned trade mark.“ (emphasis added) As is evident from the above extract, Section 34 deals expressly with and protects a prior user of an identical or deceptively similar trademark in relation to similar goods or services provided such use also predates registration by the person alleging infringement. As a result, use of an identical or similar trademark by a prior user cannot be interfered with or restrained even by a registered proprietor of a later mark. This provision underscores the primacy and significance attached to use in trademark law as also held in Syed Mohideen and Neon Laboratories. Importantly, it also indicates that Parliament applied its mind to use-based protection in relation to an unregistered trademark, but confined such protection to prior use without extending the same to honest and concurrent use. With regard to honest and concurrent use or other special circumstances, the TM Act enables a person asserting such use or other special circumstances to apply for registration under section 12 and, if https://www.mhc.tn.gov.in/judis  C.S.(Comm.Div.) No.232 of 2020 successful, rely on sub-section (3) of section 28 to resist an action for infringement at the instance of the earlier registrant. Before drawing definitive conclusions, however, it would be instructive to consider precedents.