Genesis of the Dispute
The trademark dispute between Macrotech Developers (previously Lodha Developers) and the House of Abhinandan Lodha (HoABL) centers on an interpretation of Section 29(5) of the Trade Marks Act, 1999, regarding use of the 'Lodha' trademark, especially considering the 2015 separation of the Lodha siblings.
In 2015 and after the separation of the Lodha brothers, a Family Settlement Agreement ("FSA") was concluded. Through that FSA, Abhishek Lodha was given the Lodha Group which eventually changed the name to Macrotech Developers. Abhinandan Lodha got his share of ownership in the group by giving up ownership for Rs. 500 Crores, and the FSA, also gave Abhinandan two businesses, "Lodha Ventures," and "Lodha FinServ." The heart of the dispute regarding the FSA and whether Abhinandan is permitted to use the 'Lodha' name in his businesses. Abhishek, CEO of Macrotech Developers, held that the FSA, prevented Abhinandan from using the 'Lodha' trademark, and any branding associated with it. The other and ancillary issue in the case claims regarding the two distinct businesses, whereby Macrotech Developers operates in high-rise real estate, HoABL operates horizontal development.
Section 29(5) of the Trade Marks Act
Section 29(5) of the Trade Marks Act is especially relevant in determining validity of Macrotech Developers' claim of infringement. Section 29(5) was designed to allow the registered trademark to be protected against use of the trademark as part of a trade name or business name, when the goods or services being provided the business are within the scope of the trademark registration.
There were two main elements to prove infringement under Section 29(5): The defendant provided the registered trademark as part of the trade name or business name The trade or business provided goods or services which provided were in relation for which the mark was registered. In this case, there is no question HoABL used the 'Lodha' name in their business title, with the services they provided particularly in the area of real estate development closely resembling those provided by Macrotech Developers. Since the 'Lodha' trademark was registered in class 36 and 37, and HoABL was engaged in the real estate sector, rang the question whether its use of the 'Lodha' name was in a manner which was causing dilution of the brand or others to confuse Macrotech Developers' brand with HoABL.
Trademark Class 36 covers services related to insurance, financial affairs, monetary transactions, and real estate, including banking, investment trusts, insurance brokerage, and property valuation. Class 37 pertains to construction, repair, and installation services, including building construction, maintenance, restoration, and specialised services like plumbing, electrical, and shipbuilding. Both classes focus on specific industries such as finance and construction.
Proving Infringement Under Section 29(5)
Section 29(5) is significant for the fact that it does not require the plaintiff to show public confusion, or unfair use, or that the defendant's use is detrimental to the distinctive character or the reputation of the trademark. The section only inquires into whether the defendant used the trademark in its trading name in connection with goods or services for which the trademark is registered.
In this matter, Macrotech Developers, which holds the trademark rights for 'Lodha' specifically in the real estate development sector, would need to show only two key factors to be successful under Section 29(5):
- HoABL's use of the 'Lodha' name in its trading name.
- HoABL's provision of services that coincide with Macrotech's area of real estate services, thus corresponding to the area of the trademark registration, as to the goods and services that HoABL provides and what Maxrotech are involved in.
Based on the facts, HoABL has met the twin requirements set out for infringement under Section 29(5). HoABL have used 'Lodha' in its name, and to the extent that HoABL's property development is similar especially high-rise buildings, like Macrotech's then this would make it difficult to dispute a claim under Section 29(5).
In Cipla Ltd. v. Cipla Industries (2017), the Bombay High Court explained that Section 29(5) provides trademark owners with the ability to prohibit the use of a registered trademark in a trade name if both of the following conditions are satisfied: the trademark is being used as part of a business name; and the business has goods and services being offered that are those for which the trademark is registered. The Court found that if these two conditions are satisfied, the plaintiff does not have to show confusion or unfair advantage had been obtained, which made Section 29(5) easy or 'no-fault' for the trademark owner.
In RPG Enterprises Ltd. v. Riju Ghoshal (2022), the Bombay High Court found that the defendant had the 'RPG' mark as part of their trade name, but in this case the goods and services being dealt with by the defendant were not similar to those being sold under the plaintiff's registered mark. The court found that, because the businesses were not related, Section 29(5) did not apply, suggesting that trademark protection under Section 29(5) is restricted to situations where the trademark is being used for goods and services that are similar.
In Bloomberg Finance LP v. Prafull Saklecha (2013), the Delhi High Court concluded that if goods and services are dissimilar, a trademark owner may still be able to pursue relief under Section 29(4) of the Trade Marks Act (as opposed to Section 29(5)). The Court's ruling indicates that Courts can look beyond Section 29(5) to ensure trademark owners are not at risk of losing their rights - simply because the goods and/or services offered are different.
Family Name and Bona Fide Use
A significant part of the dispute concerns whether Abhinandan's use of the name 'Lodha' constitutes bona fide use under Section 35 of the TM Act. Section 35 states, 'A registered proprietor is not entitled to interfere with the bona fide use of a name by another person, whether it is the name of that person or of an ancestor in business.' This section only applies to bona fide use of a name and if it is used without any intention to deceive or take unfair advantage of a trademark that currently exists.
Sections 35 has also been held by the courts not to apply in situations such as the Lodha brothers, when agreement, generally a family agreement e.g. an FSA, can limit or stop someone from using a family name to seek unfair competitive advantage, or use it as a trademark. If the FSA specifically prohibits Abhinandan from using and legally limits his right to use the name 'Lodha', it follows that section 35 cannot apply regardless of whether bona fide use is being made of the name.
Conclusion
The case between Macrotech Developers and HoABL illustrates the relevance of Section 29(5) in protecting brand identity. In family disputes, the terms of family settlement agreements are relevant in determining the use of a family name in association with a trademark. The Bombay High Court has appointed Justice Raveendran to mediate the dispute, and the outcome of this dispute will help clarify trademark protection for family businesses and brand identity.
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