Use of Common Surnames as Trademarks

Using the name or a surname of a founder as the name of the business is a very common practice in India. For a long time, people have been naming the businesses they start after themselves so that the identity of the business is strongly associated with the founder. This practice extends to the international sphere as well, and numerous well-known brands are named after the person that started them (Tata, Honda, Ford, Ralph Lauren, Aditya Birla Group, Mahindra and Mahindra, and many more).

The earlier Trademark and Merchandise Act, 1958, in Section 9(d), disallowed the use of names or surnames in trademarks. However, the present act (the Trademark Act, 1999) is silent on the matter. The legal standing in India with respect to the use of surnames as a trademark is:

• If the trademark is only meaningful as a surname, then it must be proved that the name is distinctive in nature for an application to be considered. The reason behind this is to prevent confusion between two businesses with the same name (which might be a common surname).

• If the name or surname also has a “better known” meaning attached to it, no proof of distinctiveness is required. For example, “Green”.

Mahindra and Mahindra vs. Mahendra and Mahendra

• Mahindra and Mahindra (plaintiff) filed an infringement suit against Mahendra and Mahendra Pvt. Ltd (defendant)

• The plaintiff contended that the defendant was using a deceptively similar mark

• The court held that even though the surname ‘Mahindra’ was a common one, the plaintiff had acquired distinctiveness through its continuous and a secondary meaning of the word had been established as the identity of the brand

• Even if the defendant was in another line of work, there would be confusion in the public’s mind that the defendant’s brand was a part of the plaintiff’s brand

• Thus, the court decided in favor of the plaintiff

Dr. Reddy Laboratories vs. Reddy Pharmaceuticals

• Dr. Reddy Laboratories (the plaintiff) was a pharma company that had been operating under that name for over 19 years and was even engaged in overseas operations

• The defendant’s company was new and not as established as the plaintiff, but the defendant contended that the plaintiff had no claim over a common surname such as ‘Reddy’, and the defendant company was well within its rights to have a name after the Managing Director of the company

• In this case, the court held that the drugs and pharmaceutical products made by the plaintiff had a high reputation in the market and the brand had earned a lot of goodwill from the customers

• The plaintiff’s products are distinctively associated with the brand ‘Dr. Reddy’, and a certain standard of quality is expected by the customer whenever they buy a product with that branding

• The court declared that the defendant had named its company so to encash upon the goodwill and reputation of the plaintiff, and this use of the trademark by the defendant was neither concurrent nor honest

• Thus, the court ruled in favor of the plaintiff

Pratibha Singh vs. Singh and Associates

• Here, the case was slightly different from the two previous cases – the usage of the surname was considered honest and concurrent

• The plaintiff’s contention was that the trademark ‘Singh and Singh’ had been used by her since 1997 when she started providing legal services

• She registered the mark in 2005

• According to the plaintiff, the mark had become distinct and had acquired a secondary meaning especially in the field of IPR, as customers had come to expect excellent legal service from the brand

• The plaintiff alleged that the defendant had established an IPR law firm named ‘Singh and Associates’ and they were making unsolicited approaches to the plaintiff’s client with the obvious intention to create confusion in the minds of the public

• However, the court held that there was no evidence of the use not being honest or concurrent, and since the surname ‘Singh’ is an extremely common one in India, no one person can claim a monopoly over it

• The case was decided in favor of the defendant

Anil Rathi vs. Shri Sharma Steeltech

• The Rathi Foundation is the registered owner of the ‘Rathi’ trademark and the plaintiff was one of the foundation’s trustees

• An MoU and a trust deed was in place between the members of the Rathi family to regulate the usage of the Rathi surname in commercial ventures

• The defendant (who belonged to the Rathi family) granted the license to third parties to use the Rathi name, and following this, the plaintiff filed a suit for infringement

• The plaintiff’s claim was based on the fact that he had the exclusive right to use the mark, and also that the defendant had violated the trust deed

• The defendant claimed that as his surname was Rathi, he was within his rights to use that surname in any commercial venture by virtue of Section 35 of the Trade Mark Act. This section restricts interference into the bona fide use of a name as a mark by any person who has that name.

• However, the court held that Section 35 only protected personal use of the name as a mark, and not granting of licenses

• Furthermore, the court proclaimed that the defendant was in violation of the trust deed signed by him and only the trustee of the Foundation had the right to grant licenses for the use of the name

• This case was ruled in favor of the plaintiff

It can be seen by these cases that even though the Act is silent on the use of names as trademarks, various judicial pronouncements have painted a clear position on the legal position of India on this matter.

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Shivalik Chandan