INTRODUCTION
Even though Gucci, Ford, Versace, Chanel, Pagani, Ferrari, Yves Saint Laurent, Calvin Klein, Koenigsegg, and other well-known companies and trademarks are globally recognized, many people may not realize that they are all real names!
As a result, names are also useful business assets. When attempting to obtain legal protection for one's name, particularly through trademarks, things might become a little hazy.
NAMES AS TRADEMARKS
Previously, trademark registrations of personal names or surnames were expressly prohibited by Section 9(d) of the Trademark and Merchandise Act, 1958 (since abolished). Nevertheless, no such restriction is included in the current Trademark Act of 1999. In actuality, Section 2 of the Trademarks Act of 1999 has the following clauses.
Sections 2(1)(m) and 2(1)(o) define a "mark" as names and their abbreviations. A trademark must, however, fulfill specific requirements listed in Sections 2(1)(zb) and 9(1)(a) in order to be registrable, guaranteeing that it has a distinctive character and the ability to differentiate goods or services.
However, the mere submission of a name application does not suffice; it must also comply with the established requirements for registration:
- If a brand is well-known or has gained uniqueness through previous usage, registration is permitted under Section 9(1) proviso.
- Multiple proprietors may register under Section 12 in specific situations.
- In situations where there are false indications of a connection to alive or deceased individuals, Section 14 requires written agreement.
Although names can be registered as trademarks, this might be problematic when a lot of people have the same name and last name. Despite this difficulty, several brand names—like BAJAJ, TATA, and JINDAL, among others—have surnames and names that are protected by intellectual property regulations.
In addition to the aforementioned, Indian courts have emphasized two fundamental requirements for such registration in numerous cases:
- If the applicant demonstrates distinctiveness, the proposed term for registration cannot be registered if it has no other meaning than a surname.
- Even without evidence of distinctiveness, a term that is requested for registration may be registered if it has a "well recognized" meaning other than that of a simple surname.
TRADEMARK INFRINGEMENT AND PERSONAL NAME
Section 35 of the Trademark Act, 1999 states that,
"Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bonafide 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, or any of his predecessors in business, or the use by any person of any bonafide description of the character or quality of his goods or services."
In other words, a trademark owner cannot stop someone from using their own name or surname in business, provided it is used honestly and lawfully.
In the case of Dolma Tsering v. Mohd. Akram Khan and Anr, The petitioner, Ms. Dolma Tsering, has been selling the Tibetan delicacy "Momo" in India since 1994. This was recently the case of Dolma Tsering v. Mohd. Akram Khan and Anr. "DOLMA AUNTY MOMOS" was a trademark registered to the petitioner. The respondent's trademark, which was not only identical to the petitioner's but also used the petitioner's name "DOLMA," was challenged by the petitioner. The petitioner demanded that the respondent's trademark be revoked in accordance with Trademarks Act Sections 11(1), 11(2), 11930(a) (Relative Grounds of Refusal), and 47. The Trademark Registry was ordered by the Honorable Delhi High Court to update its Register and website with the respondent's trademark cancellation and removal within four months.
CONCLUSION
Although Shakespeare famously mused, 'What's in a name?', in the real world, names carry immense value and significance across all facets of life—be it personal identity, reputation, or commercial branding. In the Indian legal context, the importance of names has been increasingly recognized, especially in the domain of intellectual property. While the Trade Marks Act, 1999 does not explicitly set out specific provisions regarding the registration of personal names or surnames as trademarks, Indian courts have stepped in to fill this legislative gap. Through a series of landmark judgments, the judiciary has laid down important principles and clarified the legal standards for the registrability of names under trademark law. These judicial precedents reflect a positive and progressive approach, affirming that names—particularly when they acquire distinctiveness or are associated with a brand or commercial identity—can indeed enjoy trademark protection. As a result, even in the absence of express statutory language, Indian courts have contributed significantly to the evolving jurisprudence surrounding the protection of personal names and surnames as trademarks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
