Honest concurrent use and geographical limitations justify registration of similar marks under Section 12.

The Respondents (2 and 3) applied for registration of a device mark "SPECIAL GANESHA BRAND" (No. 1831646) in Class 30

The Appellant opposed the registration, asserting prior use of the mark "GANESH" since 1950

The Registrar of Trade Marks rejected the opposition on 11.09.2024, granting registration to the Respondents

Evidence showed the Appellant’s documented use began in 1992, while the Respondents provided a Chartered Accountants’ certificate showing turnover from 1995–1996

Notably, the Respondents held an earlier registration (No. 460314) for a similar mark since 1986, asserting use from 1978; a rectification petition filed by the Appellant against that mark had been withdrawn without leave to refile

Both the Appellant's and Respondents' marks were subject to territorial limitations—West Bengal and Karnataka, respectively

1. Whether the Respondents established "honest concurrent use" or "other special circumstances" under Section 12 of the Trade Marks Act, 1999, to justify registration

2. Whether the Chartered Accountants’ certificate, unsupported by an affidavit or underlying invoices, constitutes valid evidence of use before the Registrar

3. Whether additional documents regarding the Appellant’s use since 1936 were admissible at the appellate stage

The Court primarily applied Section 12 of the Trade Marks Act, 1999, which permits the registration of identical or similar marks by more than one proprietor in cases of honest concurrent use or "other special circumstances"

It further observed that the Registrar of Trade Marks is not strictly bound by the Evidence Act, 1872, and does not conduct a trial, thus allowing more flexibility in the forms of evidence accepted, such as certificates

Additionally, the court applied the principle that evidence must remain within the scope of pleadings, and the doctrine of territorial limitation in trademark protection

The Court rejected the Appellant's challenge to the CA certificate, holding that since the Registrar does not conduct a full trial, such certificates qualify as evidence of use, especially as the Appellant failed to object during the initial proceedings

Regarding Section 12, the Court found that even if the Appellant's use (1992) slightly predated the Respondents' documented use (1995) for the impugned mark, the Respondents' earlier 1986 registration and the Appellant’s failure to pursue rectification of that mark favored the Respondents

Critically, the Court identified "special circumstances" under Section 12: both parties operated under strict territorial limitations (Karnataka for Respondents, West Bengal for Appellant)

This geographical separation mitigated the risk of confusion.

Finally, the Court refused to admit the Appellant’s 1936 advertisements as they contradicted the Appellant’s own pleadings of use since 1950 and lacked a documented link to the current entity

The Court held that the Respondents were entitled to protection under Section 12 of the Trade Marks Act due to honest concurrent use and the special circumstance of distinct territorial markets

All connected miscellaneous petitions were closed