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Can multiple entities trademark the same surname under same class?

November 15, 2021

By Ananyaa Banerjee and Diksha Singh

Our family names are a crucial part of our identity as they carry familial, cultural, and historical values. Oftentimes, many individuals also use family names/surnames as a part of their business identity or trading style, and in the course of trade, also as their trademarks, and seek to have the said surname trademark registered under the Trade Marks Act, in order to secure statutory protection therein. Even so, what is the position of the law vis-à-vis registration of surname trademark?

Section 11(1) of the Trade Marks Act, 1999, states that a trademark that is similar to an earlier trademark, and in respect of the same/similar goods and services, and therefore, likely to cause confusion, is not registrable. However, Section 11 provides an exemption under Section 12 of the Trade Marks Act, 1999, which allows registration of trademarks on basis of honest concurrent use.

Further, Section 35 of the Trade Marks Act, 1999, provides that a proprietor or registered user of a registered trademark is not entitled to interfere with the bonafide use of his own name by a person.

Thus, on a combined reading of the aforementioned provisions of the Act, it can be inferred that surnames may be allowed to be registered as trademarks under the Trade Marks Act, 1999. This assumption holds merit as several people have been using their surnames as their trademarks or trade names, and have also been granted trademark registration for the same by the Trade Marks Registry.

However, as multiple people are registering/seeking to register their surnames as trademarks, there could understandably be a risk of confusion amongst the general public and members of the trade with regard to the source of the said trademark.

Registration of the same/similar surnames by multiple persons would lead to the dilution of the primary purpose of obtaining statutory protection over the same, as one may not be able to claim exclusive right over the surname or stop other people from using it, especially with respect to similar/ identical goods and services. On the other hand, preventing one from registering/using their surname as their bonafide adopted and used trademark may also be against the principle enshrined in Sections 12 and 35 of the Trade Marks Act.

This tug-of-war between maintaining exclusivity of trademarks on one hand, and allowing bonafide use/registration of the same name by multiple proprietors, has led to a plethora of case laws over the years, and Courts have taken varied stands on the issue.

CASES WHERE SAME SURNAME WERE ALLOWED:

In Precious Jewels v. Varun Gems[1], the registered proprietor of the trademark “RAKYAN” obtained an injunction against the trademark “NEENA AND RAVI RAKYAN” in the name of Defendant. However, the Hon’ble Supreme Court held that the injunction order was unjust since the Defendant was bonafide user of the disputed mark, and observed that “A man is entitled to use his own name honestly and fairly and if he does so, he cannot be restrained even if some confusion arises”.

Similarly, in the case Somashekar Patil v. D.V.G Patil[2], Plaintiff claimed that Defendant was infringing on his right by using the name “PATIL”. The Court, on the other hand, found that both parties were using the surname PATIL for their separate businesses because they were related to the Patil family and that the Defendant was a genuine user of the name “Patil” by virtue of the same.

Moreover, in the case of Goenka Institute of Education & Research v. Anjani Kumar Goenka and Ors[3], both parties were using the name “GOENKA” as a part of their trademarks, i.e., “GOENKA PUBLIC SCHOOL” and “G.D. GOENKA PUBLIC SCHOOL”, and the Court allowed the Appellant to use the name “GOENKA” with certain conditions, as both parties had started using their marks around the same time, and “GOENKA” formed a part of the Appellant’s Trust’s Name, thereby deciding that there was honest concurrent use by the Appellant. Thus, the Court ruled in favor of the Appellant and allowed the rival marks to co-exist for the same services.

WHERE THE SAME NAME WAS NOT ALLOWED

On the other hand, in the case Skipper Limited v. Akash Bansal & Ors[4], the Court observed that a person should be allowed to use his own name for his business and if any confusion is caused, the same should not be a ground to restrict the person from using his name in respect of his business. However, the Court also held that “if a person oversteps that right and does anything in excess of his aforesaid right which would result in deception, he should be restrained in an action of passing off”. The Court went on to decide the matter in favour of the Petitioner, inter alia stating that adoption of the same name “BANSAL” by the Defendant alongwith the common field activity of both parties, “was likely to deceive and the defense of honest and bonafide use was not sustained”. Similarly, in Bajaj Electricals Limited v. Metals & Allied Products & Anr[5], Bajaj Electricals were successful in injuncting the Defendant firm from using the mark “BAJAJ” (from the name of their partner, Mr. Surender Bajaj), and the Court held that the Defendant had adopted the trademark BAJAJ with a dishonest intention to pass off their goods as those of the Petitioner.

Moreover, in the case of Dr. Reddy’s Laboratories v. Reddy Pharmaceuticals[6], the point of contention was the surname “Reddy” by Defendant, who claimed that since “Reddy” is a common surname (derived from the name of their Managing Director), there could be no monopoly on the same. However, it was observed that the Plaintiff’s prior trademark ‘” Dr. Reddy”’ had acquired distinctiveness, as well as goodwill and reputation in the pharmaceutical sector, and the adoption of the mark “Reddy” in respect of similar products, i.e., pharmaceutical preparations by the Defendant, was dishonest and not an honest or concurrent use.

DISTINCTIVENESS OF THE NAME

An important factor that may be taken into consideration is the unusualness of the surname – for instance, certain Indian surnames like Singh, Gupta, Patel, etc. can prima facie said to be non-distinctive and therefore may not be monopolized by a single proprietor.

On the other hand, uncommon names such as Tata, Premji, Ambani, etc. have a higher degree of distinctive character, and therefore may have a greater degree of protection against subsequent use/registration by other entities.

In this regard, an additional issue is that even if proprietors are able to get their surnames registered as trademarks, they may not be able to successfully enforce the same against third parties who may be honestly and bonafide using / registering the same surnames, even for similar services/goods, depending on the distinctiveness of the surname, unless they have acquired secondary character with regard to a particular proprietor on account of long and extensive use.

FACTORS TO DECIDE ‘BONAFIDE USE’

From the aforesaid analysis, it appears that due importance is given to not only to the reason for adoption of the trademarks (i.e., from names/surnames) but also to:

  • The relevant date of adoption of the trademarks;
  • The area of business under both trademarks; as well as
  • The distinctiveness and/or reputation accrued in the earlier trademark.

Thus, based on the aforesaid factors, while both parties were allowed to register the trademark GOENKA in respect of similar services, the subsequent adoption of the trademark REDDY for pharmaceutical products was held to be dishonest.

CONCLUSION

To sum up, it is important to understand that in the absence of any statutory prohibitions, surnames may be allowed registration, however, registration itself may not play a beneficial role as it may not grant real exclusivity on the same, and moreover, the trademark may not be enforceable against other trademarks unless a high degree of distinctiveness and reputation is established, alongwith the malafide intention of the subsequent proprietor. In such cases, it is very important to strike the right balance between allowing a person the bonafide use of his/her name, and also preventing any likelihood of confusion or association that may arise due to the use/registration of the same name in respect of the same/similar goods and services.

[1] 014 (60) PTC 465 (SC)

[2][2] Misc F.A No. 2707 of 2018, Karnataka High Court

[3] 2009 (40) PTC 393 (Del)

[4] 2016 SCC OnLine Cal 983

[5] AIR 1988 Bom 167

[6] 2004 (29) PTC 434 (Del)

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Titiksha Sinha, Associate at S.S. Rana & Co. has assisted in research of the article.

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