Surnames and Trademarks
Generally in India we have seen that businesses have been started by the surname of their family members or from the surname of a person who is starting the business. This practice has been followed in India for a very long time and such practice of adopting surnames for the name of the business is done purely so that customers can easily associate the surnames so adopted thereupon particular business. But thanks to the increasing number of companies cropping up in India, the registration of a brand or a business with a surname has taken a severe hit as it often leads to confusion and deception in the minds of the public leading to suits at courts with two parties fighting it out for a surname.
Even though there is no clear law on the registration of surnames as a trademark, the Delhi High Court rulings on the case Anil Rathi Vs Shri Sharma Steel Tech gives us a fair idea of what we should keep in mind before starting the business with surnames in India.
Rathi as a Trademark
In the present case Plaintiffs and Defendants were engaged in the manufacturing of steel products under the Trademark “RATHI” which happens to be the name of the family that is engaged in the said business. The plaintiff herein was one among the trustees of the inspiration that runs the business, whereas the Defendants are the relations . An MOU was signed between both the parties upon use of the Trademark “RATHI”.
However one of the Defendants on his own acted in contravention of the MOU and Trust Deed and had started granting license to third parties for the “RATHI” Trademark for which the Plaintiff herein is the registered proprietor.
The Plaintiff had filed an instant suit stating that the defendants had infringed upon the Trademark “RATHI” and the foundation of the plaintiff is the only entity that has the rights to grant licenses for the impugned trademark.
Findings of the Court
On the basis of section 28 of the Trademarks Act, the Plaintiff argued that they are the registered proprietor of the mark “RATHI” and they are the exclusive user of the mark therefore. They further argued that the mark is being applied to obtain relief in respect of the infringement of the Trademark.
However, the defendant in their defense argued that the use of the Trademark “RATHI” was bonafide as provided under section 35 of the Act. Section 35 briefs that the registered proprietor or the registered user of a registered Trademark shall not interfere with any bonafide use by a person by his own name or that of his place of business.
While the Defendants was seeking protection under section 35 of the Act, the court held that the defendants could not sek shelter under section 35 of the Trademark Act as it was restricted to the personal use of a registered trademark and did not encompass aspects that deal with the grant of license or use of the registered trademark by third parties. In addition to this, the court also held that such act of the defendant was clearly in contravention of the MOU and Trust Deed between the Plaintiff and the Defendant.
The court found that the use of the registered Trademark RATHI by the defendant was not bonafide as the Defendants granted license for use of the impugned mark in the same industry as that of the plaintiff.
Although this decision of the High Court sheds some much-needed light on the interpretation of Section 35 of the Trademarks Act, there is still nothing substantial when it comes to deciding cases wherein the point of the argument is with regards to surnames being used as trademarks with respect to business. In such an event where the impugned mark is a surname or a family name, the Court should dive deep into the main aspects of Section 35 namely, the bona fides requirement and therefore the likelihood of confusion which has been addressed appropriately during this case. It would not hurt to have more clarity on the matter!
Consult BIAT Legal LLP for any Trademark related queries.