IP Rights: What’s in a name?

What do Mahindra, Bajaj, Reddy, Manju and Goenka all have in common? Indian courts have defended the commercial value of these names and granted injunctions against rival users. What do Gautam Gambhir, Jindal, and Singh have in common? The judiciary has not extended them the same courtesy. All this begs the question: can you trademark your name?

At the heart of this issue lies Section 35 of the Trademarks Act, 1999, which extends legal protection of “bona fide use by a person of his own name or that of his place of business…” The principle is simple. You were born with your name; you should be allowed to do business without anyone preventing you from using it. Who can stop you from marketing yourself and making a living? But when we consider this question more seriously, larger issues around legal personality, distinctiveness and bona-fide use invariably arise.

Take legal personality. Defining usage is thorny because people tend to operate businesses under different legal structures. While the owner of a sole proprietorship has complete control of his business, a partnership firm comprises multiple individuals with varying stakes, and a company is a separate legal entity. This is all the trickier in India, where family empires dominate business and names are routinely used as identifies of the commercial venture.

During the early development of this jurisprudence, the Bombay High Court in the case of Kirloskar Diesel Recon Pvt Ltd and Anr v. Kirloskar Proprietary Ltd and Ors considered the request for an injunction on ‘Kirloskar’ which is a common surname in Maharashtra. The judge granted the injunction on the basis that “saving for use of name…does not apply to artificial person like incorporated company”. According to the Court, you can’t choose your name, but you are always free to choose a firm or company name. Based on this distinction, the Court ruled against granting use of name protection.

In 2002, the Supreme Court affirmed this principle and granted Mahindra & Mahindra an injunction against a rival company, although the rival company’s founder was named Mahendra Parwani.

Distinctiveness matters too. Two types are typical in trademark law. The first consists of distinctiveness that creates a secondary meaning on the trade name. In Mahindra & Mahindra, the Supreme Court held that the name had acquired a distinctiveness and secondary meaning in the trade circle, and people had come to associate this name with a certain standard of goods and services. For this reason, Mahindra & Mahindra was entitled to protect the global value of its name.

Equally, Dr. Reddy’s Laboratories was granted an injunction against Reddy Pharmaceuticals Limited. The Delhi High Court held that “the trademark "Dr. Reddy" in spite of not being registered has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceutical...” and that “No other Reddy has a right to start a rival business by using the same trade name on the plea that it is his surname.” Such was the power of distinctiveness.

The second type of legal distinctiveness constitutes distinguishability. As recently as March 2024, the Delhi High Court declined to grant Jindal Industries an injunction on ‘Jindal’ against Suncity Sheets for usage of the mark ‘RN Jindal SS Tubes’. The Court said that the founder of the latter enterprise, Rachna Nitin Jindal, named the product after her name and the two rival trademarks were sufficiently distinctive for her to receive use of name protection. Ultimately, distinctiveness is a question of fact.

More generally, courts have granted protection to users trading and operating under their full name. For instance, in Anjani Kumar Goenka and Anr v. Goenka Institute of Education and Research, the Delhi High Court granted an injunction to the founders of GD Goenka School against a rival user of ‘Goenka Public School’ but did not extend that same legal protection to Mohini Devi Goenka Girls and Goenka Shiksha Avam Sodh Sansathan on the basis that these are named after the founders’ full names, and it would consequently not result in market deception.

Still, just because you happen to share the name with a famous personality does not mean you should be permitted to profit from it. The test of bona fides is fundamental to a claim for legal protection. As early as 1987, the Bombay High Court granted an injunction to Bajaj Electricals Limited against a partnership firm operated by a family with the surname ‘Bajaj’. The partnership firm published a brochure with statements that were designed to mislead the public into believing its kitchen appliances were manufactured by Bajaj Electricals. Such advertisements disentitled the firm to use of name protection.

Similarly, in Manju Monga v. Manju Mittal, the Delhi High Court was asked to consider an injunction on the name ‘Manju’. Manju Monga, the sole proprietor of the business Manju Monga Cookery Classes, routinely appeared on various TVs shows and had her recipes published and widely circulated in print media. Monga alleged that Mittal was engaging in unfair trade practices by operating a similar business under the name Manju Mittal Cookery Classes and trading on her goodwill. Mittal claimed protection under Section 35 based on full name usage. The judge was unimpressed. The Court concluded that bona fide use “means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader”. Since Mittal was a former student of Monga and had adopted the colour combinations and writing style similar to that of Monga, the Court held concurrent usage would doubtless result in confusion and deception.

Celebrity status isn’t always enough either. Famous cricketer Gautam Gambhir sought an injunction against a restaurant owner with the same name who would include the slogan ‘by Gautam Gambhir’ as a tagline in his restaurant chains. The cricketer alleged that such use was deceptive and invariably resulted in the restaurant owner profiting from his fame. The Court disagreed and held such use was bona fide since there was no attempt by the restaurant owner to profit of the cricketer’s fame and no effort to create any association.

What is clear from these judgments is the fluid application of legal criteria. The determination of outcomes is as contingent on distinctiveness and bona fide use as it is on the legal structures involved. At the end, the fundamental purpose of trademark is to distinguish your goods and services from rivals. And what distinguishes you more than your own birth name? Some will see this protection as defeat for intellectual property rights, others as a victory for competition. Ultimately, If you use your name in your business honestly and without foul play, you do so with the comfort that no one can take that away from you, not even Gautam Gambhir.

Rohin Dubey is a practicing lawyer at the Gurgaon based law firm N South, Advocates.