Names Matter! Using Names as Trademarks

William Shakespeare once said, ‘What’s in a Name?”

What Mr. Shakespeare so famously speculated centuries ago has a surprisingly large bearing in the world of trade marks.

Brands and trade marks such as Gucci, Ford, Versace, Chanel, Pagani, Ferrari, Yves Saint Laurent, Calvin Klein, Koenigsegg, etc., are some famous trade marks having global fame and yet what might get overlooked by many, is that all these brands are in fact actual names!

Therefore, names also act as valuable commercial assets. However, things can get a little murky while seeking legal protection for one’s name, especially trademarks.

Yes, names can indeed be registered as trademarks in India.

Previously, the Trademark and Merchandise Act, 1958 (now repealed) under Section 9(d) specifically denied trademark registrations of personal name or surname. However, the current Trademark Act, 1999, does not contain any such limitation. In fact, the following provisions are hardwired in Section 2 of the Trade Marks Act, 1999.

Under Section 2(1) (m) and Section 2(1)(o), a "mark" includes names and its abbreviations. However, for a trademark to be registrable, it must meet certain criteria outlined in Section 2(1)(zb) and Section 9(1)(a), ensuring it has distinctive character and can distinguish goods or services.

However, mere application for a name isn’t enough, it must meet registration prerequisites:

1. Section 9(1) proviso allows for registration if a trademark has acquired distinctiveness through prior use or is well-known.

2. Section 12 permits registration by multiple proprietors under certain circumstances.

3. Section 14 mandates written consent in cases involving false suggestions of connection with living or deceased persons.

While names can indeed be granted trademark registration, the same may pose a challenge when many people share similar names and surnames. Despite this challenge, there are brand names where surnames and names have been protected by IP laws, such as BAJAJ, TATA, and JINDAL etc.

In addition to the above, Indian Courts in a plethora of cases have highlighted two basic prerequisites for such registration:

• If the proposed term for registration does not have any other meaning than a surname, it cannot be registered unless the applicant shows distinctiveness.  

• If the word proposed for registration has a “well recognized” meaning other than a mere surname, then it can be registered even if no proof of distinctiveness is provided.

In the case of Mahindra and Mahindra Paper Mill v. Mahindra and Mahindra Ltd, a suit was filed against the appellants (Mahindra and Mahindra Paper Mills) by the respondents (Mahindra and Mahindra Ltd) for using the term “MAHINDRA” as their trademark. The respondent alleged that the use of the mark “MAHINDRA” (by the paper mill) is phonetically, visually and structurally almost identical and in any event deceptively similar to that of the respondent's registered mark “MAHINDRA." The Hon’ble Supreme Court restrained the appellants from using the trademark MAHINDRA and held that,

“The Plaintiff has been using its surname “MAHINDRA” as its mark for over 50 years, and it's become well-known and associated with a certain level of quality. If someone else uses the name in business, it could make people think they're connected to Mahindra, which could harm Mahindra's business.”

A similar observation was also made by the Hon’ble Delhi High Court in the case of Honda Motors Co. Ltd. v. Charanjit Singh and Ors., wherein the Court opined that the trade mark Honda, which derives its name from the founder of the said company, “connotes distinctiveness, reputation, quality and goodwill acquired by the Plaintiff over a number of years and is understood by the consumers as associated with the Plaintiff.”

However, the Hon’ble Bombay High Court in the case of Raymond v. Raymond Pharmaceutical held a contradictory view when dealing with surnames in the pharmaceutical industry. In this case the issue that cropped up was “Whether the use of the mark 'RAYMOND' by the Defendant for online medicine business infringed the Plaintiff’s mark 'RAYMOND' which is instituted from the name of its founder, Mr. A.J. Raymond?”

The Hon’ble Court examined the dispute over the domain name www.raymondpharma.com and concluded that its use did not dilute the plaintiff’s mark, 'Raymond.' While acknowledging the distinctive character of the plaintiff’s mark, the Court found no evidence that the defendant adopted the domain name unfairly or to harm the plaintiff’s reputation.

In the case of Prathiba M Singh v. Singh and Associates, the Hon’ble Delhi High Court had allowed the defendant to continue using the mark ‘Singh & Associates’ with a condition that a label consisting of words ‘Founder Manoj K Singh’ should be placed below the mark immediately to remove any scope for confusion.

In Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another, both parties were involved in the business of running educational institutes and the term “GOENKA” formed a major part of the trademarks for both parties. The single bench of the Delhi High Court passed an interim order in favor of the plaintiff which was later vacated by the division bench. By taking into account the doctrine of honest concurrent use, and in the interests of justice, the Court allowed the defendant to continue using the mark “Goenka” with certain conditions.

In the case of Manju Monga v Manju Mittal, the plaintiff was using the mark “MANJU MONGA COOKING CLASS” and claimed that the word “MANJU” and Cookery classes formed an integral part of her trademark and had acquired goodwill. The plaintiff alleged that the defendant’s the use of the mark “MANJU MITTAL’S COOKERY CLASSES” amounted to unethical trade practices and violated the plaintiff’s trademark rights. The Hon’ble Delhi High Court held that the defendant was not entitled to use the name "MANJU" exclusively with regard to "Cookery Classes" nor shall she use a similar colour scheme and layout as that of the plaintiff.

However, to strike a balance, the Court allowed the defendant to use "MANJU MITTAL COOKERY HOUSE" or "MANJU MITTAL TRAINING CENTRE" along with her photographs, instead of "MANJU MITTAL COOKERY CLASSES", subject to the condition that the defendant shall use her name "MANJU" and surname "MITTAL" together and always as one word, that is, "MANJUMITTAL."

Thus, in conclusion, while names can indeed be granted trademark registration, the same may have to be looked at on a case-to-case basis.

In India, various celebrities have managed to obtain trademark registration for their names, in order to protect their personality rights from being violated, even though personality rights are not defined in the Trademark Act, 1999.

However, Indian Courts from time to time have recognized the importance of Personality Rights and have recognized the reputation/ goodwill attached to a celebrity names. Recently the Hon’ble Delhi High Court in the case of Anil Kapoor v. Simply Life India & Ors., highlighted the issues surrounding personality rights and restrained the defendant from the unauthorized use of film actor Anil Kapoor’s name, likeness, voice, and any aspect of his persona.

The list of a few celebrities who have obtained successful trademark registrations for their names is provided below:

In this regard, an important check and balance herein is the presence of Section 14 of the Trade Marks Act, 1999, which essentially prohibits third parties from obtaining registration over celebrities’ names without consent.

Section 35 of the Trademark Act, 1999 states that,

“Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bonafide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, or any of his predecessors in business, or the use by any person of any bonafide description of the character or quality of his goods or services.” 

In other words, a registered proprietor cannot prevent an individual from using one’s name or surname in the course of business as long as it is done legitimately.

In the case of Precious Jewels v. Varun Gems, the owners of the registered trademark “RAKYAN” got an injunction against the defendant and restrained them from using the mark “Neena and Ravi Rakyan” in relation to a jewelry business. On appeal, the Hon’ble Supreme Court found the injunction order granted in favor of the Plaintiff was unjust. The Hon’ble Supreme Court affirmed the terms of Section 35 of the Trademarks Act and stated that the defendants were operating their businesses in their own names, which constituted bona fide usage.

In the recent case of Jindal Industries Private Limited v. Suncity Sheets Private Limited and Anr, the plaintiff, Jindal Industries sought for an order of interim injunction restraining the defendant from using the mark JINDAL. The Hon’ble Delhi High Court while examining Section 35 of the Trade Marks Act, 1999 held that,

“The right of a person to use her, or his, own name on her, or his, own goods, cannot be compromised; else, it would compromise the right to use one’s name as an identity marker, which would ex facie be unconstitutional.”

The Court further observed that the Trade Marks Act and the privileges it confers cannot be extended to the point where one can monopolize the use of a common name for goods, and by registering it, foreclose the rest of humanity from using it.

Recently in the case of Dolma Tsering v. Mohd. Akram Khan and Anr, the petitioner, Ms. Dolma Tsering has been engaged in the business of selling the Tibetan delicacy, ‘Momo’ in India since 1994. The petitioner was the registered owner of the trademark “DOLMA AUNTY MOMOS." The petitioner filed a against the respondent’s trademark, which was not only similar to that of the petitioner but also used the petitioner’s name “DOLMA." The petitioner called for the cancellation of the respondent’s trademark on the grounds of Section-11(1), 11(2), 11930(a) (Relative Grounds of Refusal) and Section 47 of the Trademarks Act. The Hon’ble Delhi High Court directed the Trademark Registry to remove and cancel the respondent’s trademark and update the same on its Register and website within four weeks.

Even though Shakespeare claims “what’s in a Name?”, it is undeniable that names play an important role in every aspect of our lives. While the current Trademark Act, 1999 does not explicitly mention about any requirement for the registration of individuals' name as trademarks, the Indian courts, through various precedents, have highlighted the requirements and considerations for registering names as trademarks and have delivered judgments entailing positive responses to the protection of names and surnames in the country.

About the authors: Shilpi Saurav Sharan and Pranit Biswas are Managing Associates at SS Rana & Co.

Swayamsiddha Das, Associate at SS Rana & Co. has assisted in research for this article.