Introduction
Bonafide use is a latin word which means “in good faith”, It conveys absence of intent to deceive.The statutory rights conferred by registration of a trade mark are so wide and complex that it has been found necessary to safeguard the bona fide interests of other traders from litigation and harassment by registered owners of trade marks, apart from protecting the purchasing public from imposition and fraud by infringers of genuine trade marks.In this paper we will discuss a different outlook of Bonafide use with respect to section 35 and 46(1).
What does the law talk about
Section 35 of The Trade Marks Act, 1999 talks about rights of a bonafide user and the law reads;
“Section 35. Saving for use of name, address or description of goods or services
- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services”.
The case law
- Somashekar P. Patil v. D.V.G. Patil (MISCELLANEOUS FIRST APPEAL NO.2707 OF 2018 (IPR)
- Relying on Section 35 of the Trade Marks Act, the Court held that “Even a registered user or a registered trademark proprietor cannot interfere with the bona fide use by a person of his own name.” Accordingly, the Court held that it was not a case of infringement of trade mark, but it was a clear case of bona fide use of his name by the respondent. The Court dismissed the appeal and upheld the impugned judgment vacating the injunction passed against the respondent.
- In this case the respondents were using the similar name viz. “PATIL FRAGRANCES” which was identical to that of the appellant’s registered trade name “PATIL and PATIL PARIMALA WORKS.” The word-mark “PATIL” got registered by the appellant in Class 3 under the Trade and Merchandise Marks Act, 1958, Hence the appellant pursued injunction against the defendant in order to protect their word mark.
- The appellant couldn’t pursue a case against the defendant even if they were a prior user of the word mark because the surname belonged to the defendants as well and they can easily use it
Is it really Good faith?
Section 12 of The Trade Marks Act, 1999 talk about the honest and concurrent use and the law reads as;
“12. Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.”
Now the question arises does bonafide user under section 35 of trademark act 1999 may be interpreted as honest use as both of these terms have been used in different sections which makes them different in nature but having a bonafide intention is same as having an honest intention so does the bonafide intention has any relevance when it comes to registering the trademark with the registrar under section 12 because when the issue of “Other proprietor” arises , the Proprietor should also have a “Bonafide intention” alongside being a honest and concurrent user of the trademark.
For example; If there is a trademark “QWERTY” used by two different Proprietors “X and Z”. The proprietor X isn’t aware of Z using the same Trademark, In light of section 12 , X can use the same trademark as it is an “Honest and concurrent user” however According to my view point The Bonafide intention of X also matters in deciding whether it should be registered or not.
IS Bonafide intention an excuse for Trademark infringement?
Trademark infringement is a serious offence and the aggrieved party can pursue injunction and may claim damages if they are a registered Trademark holder. The law which throws light on the definition of Infringement is section 29 of the Trademark act 1999 which reads as :
“Section 29. Infringement of registered trademarks
- A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.”
Hence the question of law which arises is when a trademark is infringed and an aggrieved party approaches court to claim the relief but according to Section 35 as mentioned above in situations of a common surname they cannot pursue the suit even if the intention of the party infringing the rights is not honest since they are using the surname or the name that belongs to them which makes them a bonafide user. And with no specific guidelines or test laid down for evaluation of Bonafide intention makes it even more challenging.
For example ; If there is a Wordmark “Vivek” used by two different Proprietors named Vivek A and Vivek S. Vivek A tries to run their business over the goodwill of Vivek S but Vivek S cannot pursue the court because the wordmark used here namely “Vivek” by Vivek A is covered under Section 35 making him a bonafide user (He using his name to run his business)
Hence in my point of view Bonafide use acts as an excuse for the defense to go ahead and protect their Trademark.
Conclusion
The biggest question highlighted in this paper was how to determine the intent of a person since the legislature hasn’t prescribed any test which could be useful in determining the intent of a person. As we all know the law can be modified as there are advances for example before RG Anand vs Delux films (1978 AIR 1613) there was no specific test to determine the similarity between a drama or a film but now the test laid down by them is efficient in today’s new modern technological world. Hence developing a test for Evaluating the bonafide intention of an individual or a business is necessary.
