Peaceful global co-existence and long, well-documented foreign use can unlock two powerful levers when Examiners raise Section 11 objections: (1) ask for “advertisement before acceptance” under the proviso to Section 20(1) so the public can test the mark through opposition, and (2) build toward Section 12 registration on honest concurrent use / special circumstances. The Bombay High Court’s Yamaha “WR” ruling is your best recent template; composite-mark guidance from KHADI “Prakritik Paint” reinforces the need for reasoned decisions that actually grapple with your evidence. Caveat: co-existence or reputation abroad is not a silver bullet—Toyota Prius reminds us territorial goodwill still matters in India.
Also Read: Trademark Litigation in India: Why Overall Get-Up and First Impressions Decide Your Case
Why founders and litigators should care
- Substring is not destiny. A cited mark that shares letters with yours (or lives in India) doesn’t end the inquiry if your evidence shows different product spaces, channels, and consumer perception, plus peaceful co-existence abroad. Courts expect the Registry to reason this through, not reflexively refuse.
- Section 20(1) proviso is a safety valve. Where Section 9/11 concerns exist but the case is arguable, the Registrar can advertise the application before acceptance—precisely what the Bombay HC directed in Yamaha. That keeps your application alive and lets the market test it through opposition.
- Section 12 exists for hard cases. The Act permits registration to more than one proprietor for identical/similar marks in honest concurrent use or special circumstances, subject to conditions. Your global co-existence dossier is relevant here.
Also Read: Deceptively Similar Trademarks – Landmark Yamaha Trademark Case
Anchor: Yamaha Hatsudoki (“WR”) — co-existence and context beat a cryptic refusal
What happened: The Registrar refused Yamaha’s “WR” (Class 12) by citing Honda’s “WR-V” under Section 11(1). The Bombay HC quashed the “cryptic” order and directed the Registrar to advertise the mark before acceptance under the proviso to Section 20(1)—explicitly noting the international use, reputation, and co-existence evidence Yamaha had put forward.
Why it matters: The Court didn’t grant registration; it demanded process fidelity—if similarity is arguable, don’t kill the application by form letter. Use Section 20(1) proviso and let the opposition system do its job. This is a pragmatic route for applicants with credible global records.
Also Read: Beating “Descriptive Use”: Five Packaging Mistakes That Hand Plaintiffs a Win
Companion signal: KHADI “Prakritik Paint” — assess composite marks holistically
When the Registry refused KVIC’s Hindi device for “Prakritik Paint” as descriptive, the Bombay HC set aside the order, faulting the Registrar for dissecting parts instead of assessing the device mark as a whole and for failing to address consistency with related approvals. The message dovetails with Yamaha: reasoned, holistic analysis is mandatory.
Also Read : Why Delay in filing the trademark case alone cannot be considered a valid ground?
The legal levers you can actually pull
- Section 20(1) proviso — advertise before acceptance
Use where Section 9/11 hurdles exist but you have co-existence, segmentation, and reputation evidence. The Registrar should consider publishing first, then letting oppositions hammer out remaining doubts. (Yamaha is your blueprint.) - Section 12 — honest concurrent use / special circumstances
Build a granular record: duration of use, geography, extent of sales, instances (or absence) of confusion, agreements/consents, and explain why conditions (limitations, disclaimers) will protect consumers. Courts recognise Section 12 precisely for these edge cases.
Skeptic check: Neither lever is a free pass. Courts still demand reasons (see Kranti Associates, “reasons are the soul of orders”) and can uphold outcomes on correct grounds even if a section is mis-cited (see TikTok well-known mark refusal).
Also Read: Dynamic Injunctions in the Digital Marketplace: Reliance’s Shield Against Online Brand Misuse
Flowchart — Turning global co-existence into Indian progress
Map the conflict → Build a co-existence dossier → Ask for s.20(1) proviso → Prepare a fallback under s.12 → If refusal is cryptic, go to HC
- Conflict map: Identify the cited Indian marks, classes, channels, and price points.
- Co-existence dossier: Foreign registrations, judgments, parallel use timelines, absence of conflict letters, evidence of peaceful market reality.
- Procedural ask: In your examination reply, explicitly request advertisement before acceptance (s.20(1) proviso) with reasons.
- Substantive fallback: Plead Section 12 (honest concurrent use / special circumstances), propose conditions (limitations, style guides).
- Escalate smartly: If the order ignores your record, challenge it; Yamaha shows the HC will remand for advertisement where warranted.
Also Read: Anti-Dissection vs. Dominant Part: Under Armour’s Landmark Victory at the Delhi High Court
Case timeline (illustrative based on Yamaha)
- Pre-filing: Decades of WR use abroad; portfolio of foreign registrations.
- Application: Filed in India (Class 12).
- Refusal: Section 11(1)—overlap with WR-V.
- HC order (13 June 2025): Refusal quashed; advertise before acceptance directed under s.20(1) proviso. Opposition (if any) to follow.
Comparison table — When co-existence helps (and when it doesn’t)
| Scenario | Effect on registration strategy |
|---|---|
| Long, peaceful co-existence abroad + different product spaces (e.g., bikes vs cars) | Strong case to publish before acceptance and to plead s.12 with conditions; let opponents test in opposition. (Yamaha) |
| Composite/device mark dissected into parts by Registry | Attack as unreasoned; insist on holistic assessment; push for publication or remand. (KHADI device) |
| Fame abroad but thin Indian goodwill for passing off | Global reputation alone may not carry you in court actions; Toyota Prius underscores territoriality. Don’t over-claim. |
Checklist — Building a winning co-existence record
- Registrations & use: Certified copies of foreign registrations; dated catalogues, ads, sales data; timeline chart of use per country.
- Peace in the marketplace: Evidence of no confusion (complaint logs), no legal clashes (or settled conflicts), and co-existence statements where available.
- Segmentation: Show distinct goods/services, channels, prices, and consumer profiles—why your buyers won’t be confused by the cited mark.
- Indian touchpoints: Even pre-launch, collect Indian press, dealership interest, events; this helps rebut knee-jerk Section 11 fears and supports proviso to s.20(1).
- Procedural precision: In replies, name the levers—“proviso to s.20(1) for advertise-before-acceptance” and “s.12 for honest concurrent use/special circumstances”.
- Reasoning audit: If refused, check whether the order engages your evidence. If not, you likely have a Kranti-style challenge.
Also Read: Use-It-Or-Lose-It in Action: Non-Use Cancellation and Cleansing the Register
“Sparring-partner” corner (calling out weak assumptions)
- Assumption: “We’re famous abroad, so India must accept us.”
Reality: For passing off, the Supreme Court’s Toyota Prius insists on Indian goodwill; for registration, reputation/co-existence can justify publication or s.12 relief—but you still face opposition. - Assumption: “Substring matches doom us.”
Reality: Context matters—markets, channels, consumers. Yamaha succeeded in forcing publication precisely because a two-letter overlap (WR / WR-V) didn’t answer the real question. - Assumption: “Any refusal is final.”
Reality: Courts are striking down cryptic orders and demanding reasons; use that to your advantage, but keep your evidence tight. (Kranti Associates principle.)
About the Author
Suresh Kumar, Advocate, is the Managing Attorney at Unimarks Legal Solutions, Chennai. Practising since 2008, he focuses on trademark infringement and passing off, appeals from the Registrar, rectification, and online/platform enforcement before the Madras High Court (IPD), Commercial Courts, and District Courts across Tamil Nadu. His practice is courtroom-first, grounded in robust pleadings, evidence discipline, and post-order enforcement. He frequently speaks on IP law at industrial forums and universities and is associated with SICCI, CII, and the Tamil Nadu Chamber of Commerce.
References: Bombay HC Yamaha “WR” order directing advertise-before-acceptance (13 June 2025); analyses by SCC Online, INTA, Lexology, and press reports. KHADI “Prakritik Paint” composite-mark ruling. Kranti Associates on the duty to give reasons. Toyota Prius on territorial goodwill.
This article is for information and education. It is not legal advice, does not create a lawyer–client relationship, and avoids case-specific recommendations. Conflicts are screened per firm policy before any engagement.
