Just as a person's name can help her establish a unique
identity and differentiate herself from the rest of the world, so
can a name distinguish a business, especially when the same has
been derived from the name of an individual or a family.
Establishing a business under an individual name or a family name
is not new, either in India or abroad. Many businesses surrounding
us have derived their names from those of individuals or families.
Many luxury brands, for example, derive their distinctiveness from
the names of individuals or families, such as Ralph Lauren, Gucci,
Versace etc. Furthermore, ever since social media (YouTube,
Instagram, TikTok) has provided a platform for ordinary people to
create content over the internet, there has been an exponential
boom in social media entrepreneurs, many of whom also run
merchandise businesses in parallel, under their own names or
usernames/handles. For example, the Swedish YouTuber Felix
Kjellberg, a.k.a PewDiePie, known for his
Let's Play videos, also has a line of clothing/merchandise sold
under the brand name Pewdiepie.
In India, Section 9(1)(d) of the old Trade and Merchandise Act, 1958 used to prohibit registration of a surname or a person's name as a trade mark. However, the new Act of 1999, is strategically silent on this aspect. Hence, there is now no express bar on using a surname as a mark for identifying one's business. However, the question that still remains is how can a common surname become a registered trade mark? What are the key features that it must contain in order to obtain protection under Indian trademark law?
Honest and Concurrent Use of Trademark- Section 12, Trade Marks Act
In several trade mark jurisdictions, including India, other than proving that your mark has acquired distinctiveness, there are additional ways by which an individual's surname mark can be registered. Section 12 of the 1999 Act provides for registration of trade marks under honest, concurrent use. This means that a mark that is identical or similar to an earlier registered mark, can also be granted registration, if it can be demonstrated that due to honest, concurrent use, it has gained recognition and can co-exist with the earlier mark without the public being confused about the origin of the corresponding goods or services.
Section 35, Trade Marks Act
Similarly, under Section 35 of the 1999 Act, a proprietor or a registered user of a registered trade mark has no right "to interfere with any bona fide 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 of any of his predecessors in business".
The word in focus here is 'bona fide', and the burden to prove the same lies on the entity
In view of the aforesaid statutory provisions, the intriguing issues that arise are:
1. Whether registering one's name as a trade mark is a
correct choice?
2. How have businesses and individuals in the past proved
acquired distinctiveness of their names as trademarks, thereby
stopping others from using it?
3. How has the concept of honest, concurrent use been decided
by the Courts?
4. When have the Courts applied the provision under Section 35
to allow anyone to conduct their business under his own
name?
We shall be discussing notable judicial pronouncements which have rendered an opinion on aforesaid issues and aided in streamlining the legal concept of trademarking of names/surnames in India.
JUDICIAL PRONOUNCEMENTS ON ACQUIRED DISTINCTIVENESS OF SURNAME TRADE MARKS
I. Surname Bata and its Acquired Distinctiveness– In the case of Bata India Limited Vs. Pyare Lal & Co.1, the Allahabad High Court was looking at a case of infringement and passing off of the Plaintiff's trade mark BATA, which was the surname of the founder of the company. The Court in this case held that "it is well established that the name 'Bata' is a word known all over the country. It is also well established that the name 'Bata' is in use from even prior to 1940. It is also well established that the name 'Bata' is a fancy name, inasmuch as the word 'Bata' is not associated with any Indian name, place, object, or term. 'Bata' is the surname of a foreigner from Central Europe. Tomas Bata, a native of Czechoslovakia, started his business in India making shoes and rubber products. The name 'Bata' is associated with his name. The defendant-respondents manufacture foam and foam materials in several of their products. They, however, use the name of their product as 'Batafoam'. Spelling of the word 'Bata' is the same as used by the plaintiff-company. There is, thus, similarity in the spelling of the word 'Bata' used by the defendant-respondents."
The Court ultimately granted an interim stay restricting the Defendant from using the mark Batafoam for its products.
II. Surname Mahindra- a well-known
trademark– In the year 2002, while relying on the
dicta of the Supreme Court of India in the case of Mahendra
& Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra
Ltd.2, the Gujarat High Court in a suit between
the same parties titled Mahendra and Mahendra Seeds Pvt.
Ltd. Vs. Mahindra & Mahindra Ltd.3 , held
that "the Plaintiff's name has acquired a distinctiveness
and a secondary meaning in the business or trade circles. People at
large have come to associate the name "Mahindra" with a
certain standard of goods and services. Therefore, any attempt by
another person to use the name in business and trade circles is
likely to and in probability will create an impression of a
connection with the Plaintiffs' group of companies."
In this case, the Plaintiff's trade mark had been derived from
the name of its promoter, Mr. K.C. Mahindra. The name
"Mahindra" may be a common name in India, however given
its acquired distinctiveness, the Court granted a stay against the
Defendants from infringing and passing off the mark. In the same
order of the Supreme Court (supra), the trade mark Mahindra was
also declared as a well-known trade mark.
III. Surname Honda- a household
mark– In the case of Honda Motors Co. Ltd.
Vs. Charanjit Singh and Ors.4 , it was held by
the Delhi High Court that the trade mark Honda, which comes from
the name of the founder of the said company, has acquired
distinctiveness and goodwill to become a household mark denoting
the Plaintiff exclusively.
"The mark HONDA connotes distinctiveness, reputation,
quality and goodwill acquired by the Plaintiff over a number of
years and is understood by the consumers as associated with the
Plaintiff."
IV. Surname Reddy- acquired distinctiveness and goodwill in pharmaceutical sector– The Delhi High Court, in 2004 passed another judgment on acquired distinctiveness with regard to the surname mark 'Reddy' in the case of Dr. Reddy's Laboratories Ltd. vs Reddy Pharmaceuticals Limited5. In the said case, although the mark of the Plaintiff was not a registered trade mark, the same had acquired immense goodwill and reputation in the field of pharmaceuticals and medicinal drugs, over the course of its business, and therefore the acts of the Defendant to pass off its goods under the name of Reddy Pharmaceutical was not accepted by the Hon'ble Court. Rejecting the contention of the Defendant that the name 'Reddy' is a common surname and therefore cannot be monopolised, the Court held that "the pleadings of the parties and the documents placed on record prima facie establish that the Plaintiff has acquired substantial trade reputation and goodwill in the trade mark "Dr. Reddy" and the defendant by adopting the trade mark "Reddy" on its pharmaceutical preparations is trying to encash upon the trade reputation and goodwill of the plaintiff Company. The use of Trade Mark/name "Reddy" by defendant on its pharmaceutical preparations is neither concurrent nor honest user. This Trade Mark has been adopted by defendant with a view to mislead the customers. Intention to practice deceit is writ large."
V. In KSB Properties Private Limited v. KSB
Aktiengesellschaft & Anr.,6the letters
'KSB' formed an essential part of the corporate name of the
first Plaintiff, having been adopted from the surnames of its
founders. One of the defences taken was that there are other
companies which use the mark 'KSB' as a part of their
trading style and therefore, the Plaintiffs could not object
especially since the name cannot be considered distinctive.
The Calcutta High Court, while upholding the grant of an interim
injunction, held that "In view of the fact that the
Plaintiff No. 1 is operating for last 130 years with the coined
trade name/mark 'KSB', (and) trade name/mark 'KSB'
is, also, registered in India in favour of the plaintiff No. 1 in
respect of various goods and/or services falling under various
classes, and as the objects of the defendant company are
overlapping with the objects of the Plaintiff No. 2 and its wholly
own subsidiary company, i.e. KSB Technical Private Limited, we are
of the opinion that the learned judge in the Trial Court did not
err in law and in the facts and circumstances of the case in
passing the order of temporary injunction."
VI. Use of "www.raymondpharma.com" does not render the surname mark "Raymond" diluted– Conversely though, in the case of Raymond vs. Raymond Pharmaceutical7, the Bombay High Court was faced with the question about whether the Defendant's use of the name Raymond for their online medicine business constituted infringement of the Plaintiff's trade mark, which had been instituted from the name of its founder, Mr. A.J. Raymond. The Defendant challenged this suit by contending that 'Raymond' is a common Christian name and no person can claim exclusivity over it. Reference was also made to the name of the popular novelist/writer Raymond T. Chandler, apart from contending that it is very common name and a large number of trade-marks use the word 'Raymond'. Although the Plaintiff tried to claim acquired distinctiveness in its name trade mark, the Court finally held that "in the case at hand, using "www.raymondpharma.com" in my view does not render the plaintiffs Mark "Raymond" diluted... Although I do not find merit in Mr. Khandekar's submission that the Plaintiff's mark lacks distinctive character, I am of the prima facie view that the domain name (of the Defendant) has not been adopted without due cause or to take unfair advantage or cause any detriment to the distinctive character or repute of the Plaintiff's mark "Raymond" especially in the light of fact that the Plaintiff's case under Section 29(5) has been negated at the interim stage."
VII. It may be noteworthy to mention that in a peculiar case before the Delhi High Court, the Plaintiff, who at the time was practising as an IP advocate, sued the Defendant, another IP advocate, from using the name 'Singh and Associates' since the same was an infringement of the Plaintiff's registered trade mark 'Singh & Singh'. In their case titled Prathiba M. Singh vs. Singh and Associates8 , a Single Bench of the Delhi High Court had allowed the Defendant to continue using the mark 'Singh & Associates' with the rider that he should mention the words 'Founder Manoj K. Singh' immediately thereafter, so as to remove any scope of confusion. However, given the facts of the case as well as the parties involved, the Court did not pass any adverse orders against anyone but rather implored the parties to look at settling the case. The case was eventually settled through a joint compromise application.
From a bare reading of the above noted cases, it seems to be the practise that Courts tend to favour the contention of 'acquired distinctiveness', by looking at the following factors:
1. The number of years of use as a (registered or unregistered)
trade mark;
2. The degree of reputation in the relevant industry, and how well
established the name is in the said industry;
3. Their status as a well-known mark. However, it isn't always
the case that just because a surname mark has been declared to be
well-known, it will automatically gain acquired distinctiveness,
thereby stopping everyone else from using the same surname mark, as
seen in the Raymond case discussed above.
JUDICIAL PRONOUNCEMENTS ON HONEST, CONCURRENT AND BONA FIDE USE
I. The concept of honest concurrent use was discussed in the
case of Kores (India) Ltd. v. M/s Khoday Eshwarsa and
Son9, wherein the Bombay High Court laid down
five factors to be considered when determining the registrability
of a trade mark. These were:
1.. The quantum of the concurrent use of the trademark in
connection with the goods concerned and the duration, area and
volume of the trade;
2. The degree of confusion likely to ensue from the resemblance of
the marks, which is an indication of the measure of public
inconvenience;
3. The honesty of the concurrent use;
4. Whether any instances of confusion have in fact been
proven;
5. The relative inconvenience, which would be caused if the marks
were registered, subject, if necessary, to any conditions or
limitations.
II. In the context of surname trade marks, the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another10, is worth mentioning here. In this case, both the Plaintiff and the Defendant had "Goenka" as a predominant part of their trademarks: the competing marks were "Goenka Public School" and "G.D. Goenka Public School". A Single Bench of the Delhi High Court had granted interim injunction in favour of the Plaintiff, which had been vacated on appeal to the Division Bench on the ground that both the parties were running their schools in different parts of the country, and there was no way for each to know about the other's existence. Furthermore, the Plaintiff had first used the mark Goenka in respect of schools and educational activities in 1994 while the Defendant had commenced their use in 1995, therefore it is not possible to have acquired distinctiveness within such a short span of time. By taking into account the doctrine of honest concurrent use, and in the interests of justice (since an adverse order would eventually impact the students of the school) the Court allowed the Defendant to continue using the mark Goenka with certain conditions, such as, the Defendant was directed to insert the name of their trust in brackets below the name of their school in order to clarify and differentiate between the two marks.
It would be pertinent to note here that in view of globalization and trans-border reputation, the defence of honest, concurrent use has become diluted over the years. With globalisation and the opening of our economy to the rest of the world, the reputation of a brand is no longer limited to the geographical borders of its country of origin, and there is in fact a considerable amount of spill over of reputation and goodwill internationally.
Bona Fide Use of Name as a Trademark- Section 35, Trade Marks Act
I. Coming to the issue of bona fide use of a name trade mark under Section 35 of the Act, the judgment of the Hon'ble Supreme Court in the case of Precious Jewels & Anr. vs. Varun Gems11, is worth noting. Here the parties to the suit were from the same family and the Plaintiffs were trying to stop the Defendants from running their jewellery store named 'Neena and Ravi Rakyan'. It was the case of the Defendants that the partners of this shop could not be restrained from using their own names for running their business. The Court agreed with this contention of the Defendants and held that since the bona fides of the Defendants to use the mark Rakyan has not been disputed, under Section 35 the Defendants were permitted to conduct business under their own name in a bona fide manner.
II. Bonafide Use of Surname- A fundamental right!!The Hon'ble Karnataka High Court in the case of Somashekar P. Patil vs. DVG Patil12 , has held that, "...in view of Section 35 of the Act, even a registered user or a registered trade mark proprietor could not interfere with bona fide use of a person of his own name or that of his place of business. Respondent-Defendant used surname "Patil" as bona fide user on basis of his family name, which was commonly used in area where their family came from. Just because surname of Appellant-Plaintiff was 'Patil', that itself was not a ground to injunct Respondent-Defendant from using word 'Patil' in his trade mark. It was a right of a person who carried surname from ages together whose family namely was alike might be for many reasons, and that was their fundamental right."
Conclusion
As more and more entrepreneurs build new businesses under their names, the number of surname and name trademarks, including those seeking statutory protection under the Trade Marks Act, have mushroomed over the years. Presently, the Indian economy is welcoming start-ups under the program "Go Vocal for Local". Therefore, it is essential that in order to protect one's rights under a surname trade mark, it should arise from a bona fide source, and eventually strive for acquired distinctiveness, so as to obtain rightful protection under the law of the land.
Footnotes
1 MANU/UP/0168/1985
2 MANU/SC/0724/2001
3 MANU/GJ/0427/2002
4 MANU/DE/1845/2002
5 2004 (76) DRJ 616.
6 MANU/WB/1139/2012
7 MANU/MH/1271/2016
8 CS (OS) No. 1173/2012
9 (1984) Arb LR 213 (Bom)
10 MANU/DE/2229/2009
11 SLP (C) No. 9942/2013
12 MANU/KA/1739/2018
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