Section 9(1)(a)1 of the Indian Trademark Act, 1999 mentions lack of distinctiveness in the mark as one of the grounds for refusing registration of the mark. However, in India, there are numerous family enterprises where personal names and surnames have been registered as trademark. In this article, I would discuss how it is possible, given the fact those names lack distinctiveness.
Section 2m2 of the Trademark Act includes ‘name’ in the definition of ‘mark’. Thus, in Jaleel Associates vs Hotel Sagar Association3, the Kerala High Court held that if a name is used for indicating any goods or services for the purpose of trade or commerce, then it is a trademark. Hence, the court protected the plaintiff’s mark ‘Hotel Sagar’ because of its prior use. However, when the word is a simple surname, without any significance, then it can only be registered when proof of distinctiveness is shown. This means that registration will only be granted when the proprietor could show prior and continuous use and the customers could relate the name with his product4. Thus in Pratibha Singh vs Singh & Associates5, the plaintiff had been using the mark ‘Singh & Singh’ since the year 2002 and it had been granted registration in 2009. Thus, the Delhi High Court asked the defendant to use ‘Founder Manoj K. Singh’ behind its logo ‘Singh & Associates’ to prevent any consumer confusion. When the name has a ‘better known’ meaning attached to it, other than being a simple name, then it can be registered without any further evidence. So in Dr. Reddy’s Laboratories vs Reddy’s Pharmaceuticals6, where the defendant was using plaintiff’s ‘Dr. Reddy’s’ logo, which is a well-known trademark within the pharmaceutical industries, the court held that it is a case of infringement. This is because while the plaintiff’s product had got enormous reputation and distinctively recognized with the logo, the defendant was only acting as an agent and has not acquired any secondary meaning in the pharmaceutical industry.
Protection to common surnames has also been granted. In Aggarwal Sweet Palace v Asst. Registrar7, the application for ‘Aggarwal Sweet Corner’ trademark for sweet products was allowed because the applicant was using the same name for the same business since a prior date from that of the opponent. Regarding the contention that ‘Aggarwal’ is a common surname, the Intellectual Property Appellate Board contrasted ‘Aggarwal’ with ‘Bhai’ which was held to be public juris in previous cases. This means the word belongs to the entire community and no one can have a trademark in it. However it held that ‘Aggarwal’ denotes a particular community and only people belonging to the community would use the surname. Further, it has also acquired secondary meaning among the customers due to its continuous use.
In the Elvis Presley vs Sid Shaw8 the plaintiff was the legal successor to the famous singer’s estate and had all the rights to deal with the merchandising activities on the name of Elvis Presley. The defendant, Mr. Shaw, was selling Elvis Presley memorabilia under the name ‘ELVIS YOURS’ since 1979. When the plaintiff went to register different products under the name ‘Elvis Presley’, it was opposed by the defendant. The English court ruled in favor of the defendant holding that one cannot have a trademark over the name ‘Elvis Presley’. Further, the court held that the defendant was using and registered the ‘ELVISLY YOURS’ mark and his goods have gained reputation in the market. Thus, customers buy his goods because of his quality and not due to name of Elvis Presley. On the contrary, neither the trademark of the plaintiff had acquired distinctiveness nor has its goods have garnered any secondary meaning in the market.
Interestingly, in the Elvis Presley judgment, the court opined that even if Elvis Presley was still alive, he could not prevent any of his fans from naming his son or dog as Elvis. This suggests that one cannot have a trademark over a name even if it belongs to a celebrity. This is because such names do not have any distinctiveness in it. This raises a question of how celebrities could register their name. The court gave an answer in that judgment itself. It held that when signatures are written with a substantially unique and highly distorted manner, then such signatures could be registered as trademark (Signature Mark). In this case, the plaintiff argued that their mark was the original signature of Elvis Presley. However, the court refused to give it any protection because it was written in a plain and simple manner.
This position seems to be different in India. Celebrities like MALLIKA SHERAWAT (Class 38), DALER MEHNDI (Class 19) have registered their name as a Label trademark. Similarly, in DM Entertainment vs Baby Gift House9, the Delhi High Court prevented the defendant to sell dolls in the name of registered trademark of the plaintiff ‘DALER MEHNDI’ who is a popular singer. The dolls could even sing songs of the plaintiff. There are cases on passing-off against cyber-squatters as well. In Tata Sons Ltd. vs Aniket Singh10, the defendant was the registered owner of the domain name www.cyrusmistry.co.uk and www.cyrusmistry.com. Cyrus Mistry is a well-known businessman. The defendant also offered to sell the domain name at an exorbitant price. The Delhi High Court held that ‘Cyrus P Mistry’ has acquired secondary meaning and the plaintiff cannot take undue advantage of his name. Hence, it ordered to transfer the domain name to the plaintiff.
This provision of the Indian Trademark Act allows any person bona fide use, inter alia, his own name as trademark for his business even if it is similar to a registered trademark. In Goenka Institute of Education vs Anjani Kumar Goenka11, the respondent was using the trademark GOENKA for providing service in education, real estate since 1994. The appellant started educational institutions like GOENKA PUBLIC SCHOOL GOENKA GIRLS SCHOOL and GOENKA COLLEGE OF PHARMACY for college which was challenged by the defendant. The appellant argued that, apart from Goenka being a common surname, it was also their own surname and would fall under bona fide use of Section 35. To this, the Delhi High Court held that since the respondent was using the name prior to that of appellant, it has acquired secondary meaning over time. Moreover, Section 35 defense is only available when the use is in good faith. However, in this case, it is leading to confusion and deception among the public. But the court allowed the appellant to use the full name such as Mohini Devi Goenka Mahila Mahavidyalaya as it would not create any confusion.
In Mr. Anil Rathi vs Shri. Sharma SteelTech12, the Delhi High Court further clarified the scope of Section 35 exception. In this case, the plaintiff and the defendant had a MoU between themselves on the use of trademark ‘RATHI’ in their family business. Defendant No. 8 had licensed the trademark to a third party. The court held the licensing to be violation of the MoU. Further, it clarified that Section 35 cannot be used as a defense against marks which has gained a secondary meaning. Moreover, it held that Section 35 is limited to personal use of the mark and grant of license to third party is not allowed.
Precious Jewels vs Varun Gems13 was a successful case under Section 35. In this case, both the parties are family members who are engaged in jewellery business. Both were using their surname ‘RAKYAN’. The Apex Court allowed the appellant to use his surname under Section 35 despite the fact that their shops were adjacent to each other. Interestingly, there was no argument of distinctiveness of the mark in this case.
In this article, I have analyzed how personal names be granted protection under the trademark law. It analyzed that personal names, without any distinctiveness could be protected if the user could show prior use. In case of well-known personal names, no further evidence is required. This position is different from of UK where courts have refused to give protection to the names of famous celebrities because such names lack distinctiveness. It can only be given protection as Signature Mark if it is written in a substantially unique manner. Moreover, the Section 35 defense against infringement also allows protection of common surnames if it has not acquired any secondary meaning and used in good faith. Further, prior use of the mark is also a defense in any passing off proceedings because such use shows that the mark has gained secondary meaning among the customers.