Co-authored by: Aditi Kharpate, a student of 4th year BBA., LL.B, from Symbiosis Law School, Noida
Starting of a business in the name of surname or personal name is not a very new concept in India. Numerous people have been using their surname with their business to associate their identity with it. But as the number of business and the plurality of same surname are increasing the association has lost its purpose and often leads to confusion. Thus if one has got uncommon and rare surname, then he might think to use it as trademark. However the major risk associated with registration of surname as a trademark is its protection. One may register it, but cannot claim exclusive right over the mark and stop others from using it (which is the ultimate purpose of registration of a trademark).
The Trademark and Merchandise Act, 1958 under clause (d) of section 9 refused the registration of surname as trademark. However, the new Act1 has no provision to allow or disallow the use of surname of personal names. The definition of the "mark" doesn't explicitly include or exclude surnames and personal names. Thus it is assumed that such registration is allowed, and hence, even applied for.
Position of trademarks regarding surnames in India-
- Where the word propounded for registration has no significance other than being a surname, then it may not be registered unless proof of distinctiveness is shown. This is done as no differentiation can be made among the goods of proprietors of same names.
- Where the word propounded for registration has a "better known" meaning attached to it other than being a simple surname for example 'Ms. Rachel Green', then it is may be registered even if no proof of distinctiveness is shown.
Though the protection of surnames as trademark is difficult, yet we are surrounded by surnames as registered trademarks. Tata, Bajaj, Honda, Ford, Ralph Lauren, Suzuki, Goenka, Mahindra and Mahindra, Sony, Ranbaxy (derived from Ranbir Singh and Gurbax Singh), Dabur (derived from Dr. Burman), Aditya Birla Group, Procter and Gamble, Johnson and Johnson, HP, Dell are few examples from the long list of such marks which exists across the globe. Few marks like Tata, Honda, Dr. Reddy's Laboratory, Philips, Mahindra and Mahindra have also acquired "well known" trademark status under the Act2.
The concept can be understood more clearly with the assistance of few cases decided by the Hon'ble courts in India. These cases highlight the two situations where the court has held:-
- That the same or similar to the
registered trademark is used with mala-fide intention and thus
amounts to infringement or passing off. In these cases, the
trademark was said to be hit by the provisions of Section 9 of the
Act which talks about the absolute grounds of refusal.
- Mahindra and Mahindra v
Mahendra and Mahendra
An infringement suit was filed by Mahindra and Mahindra (plaintiff) against Mahendra and Mahendra Seeds Pvt Ltd (defendant) for using a deceptively similar mark. The Court decided the matter in favour of the plaintiff and observed that though the word "Mahindra" is a common surname in India, the plaintiff had acquired distinctiveness and secondary meaning of the word "Mahindra" with its continuous use and if used by the defendant even in regard to different field of activity, it would surely result in creating confusion in the public mind that it belongs to the plaintiff.3
- Dr. Reddy Laboratories v
In the present suit, the Plaintiff Company which manufactured its products under the trademark "Dr. Reddy's" was engaged in the manufacture and sale of pharmaceutical products for the last over 19 years and even had overseas operations. The defendant contented that the plaintiff cannot claim any monopolist and proprietary right in a common surname such as "Reddy" and the defendant has a bona fide statutory right to use the same as it is the surname as of its Managing Director.
- Mahindra and Mahindra v Mahendra and Mahendra
- That the use of name same or
similar to the registered name is honest and concurrent (under
section 12) as the name (surname) is common in India and no one can
claim exclusive rights over it.
- Prathibha Singh v Singh
The Plaintiff contended that she coined the mark "Singh & Singh" in the year 1997 when she started independent practice of providing legal services and has been continuously using the said mark since then and the said mark has acquired a secondary meaning in reference to the plaintiff, especially in the field of Intellectual Property law. The mark was registered in the year 2005. The plaintiff came to know about another law firm named "Singh and Associates" practising in IPR laws only. The plaintiff learnt that the Advocates working in the name and style of the defendant were making unsolicited approaches to the foreign associates and clients of the plaintiff in an obvious effort to confuse the plaintiff's clients and divert work to the defendant.
- Prathibha Singh v Singh and Associates5
There are a lot of myths associated with the registration of common names and personal names as trademarks. Clearly it can be seen that we are surrounded by the names and they are even effectively protected. The key to protection of such mark is acquired distinctiveness which though cannot guarantee exclusive rights but gives a tough way for others to register the mark. Thus a unique surname can give a business your identity or else you have to build one.
1. The Trade Marks Act, 1999
2. The Trade marks Act, 1999- section 11
3. Mahendra and Mahendra Seeds Pvt Ltd. V Mahindra and Mahindra 2003 (26) PTC 434 (Guj)
4. 2004 (29) PTC 434 (Del)
5. Prathiba M. Singh v Singh and Associates 2014 (60) PTC 257 (Del)
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.