Can two business entities use the same trademark?

Authors: CS Sandeepta Bose, Senior Associate
Date: April 2021

Can two business entities dealing in different category of goods, though falling within the ambit of same class, use the same trademark in our Country?

Most likely yes!!

The case law jurisprudence in India points towards allowing bona-fide usage of marks for different category of goods provided that one of the marks is not well-known trademark. In other words, many courts in the country have upheld that registration of mark under a particular category of goods does not provide a blanket protection to other categories too, till the time the mark is a well-known trademark.

In Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd. Hyderabad and Anr. 1996 SCALE (5) 267, the court has held that “when a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona-fide intention to trade in or manufacture other goods or articles, which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification.”

In another case, namely, Canon Kabushiki Kaisha vs B. Mahajan and Ors. on 375, 2007 (35) PTC 265 Del, the Delhi High Court while deciding a plea of infringement in respect of the brand “Canon” rejected to grant injunction to the plaintiff as the goods being sold by the defendant under the same trademark were different.

In, Nandhini Deluxe v. Karnataka Co-Operative Milk Producers’ Federation Ltd. (26.07.2018 – SC) [AIR 2018 SC 3516], the allegedly infringing mark, which was first used four years after the cooperative federation’s first use, had the same name, but a different device, and was registered in the same classes (29 & 30), however, for different goods. Briefly, the Hon’ble Apex Court allowed the second mark to stay on the register on the ground of being a concurrent user, while also holding that the older mark had not acquired the status of a well-known trademark.

Also, in the instant case, the Appellant had applied for the trademark for products like tea, sugar, coffee, rice etc., as it was running a restaurant, while the Respondent had got its trademark registered for the milk and milk products. Though, both the things fall under the same class, yet these are distinct products. The Hon’ble Apex Court previously held that if a trader or manufacturer manufactures or trades in one product in a broad classification, it cannot be permitted monopoly over the mark on other products in the same class, if that trader has no bona-fide intention of manufacturing or trading in other goods and articles falling in that broad classification.

Therefore, even two distinct products, falling in the same class may be granted same/similar trademark if the nature and style of the business of the two different proprietors of the same trademark are altogether different.