Trademark And Surname- A Tug Of War

Having a business name carved out of the family name is a common and prevalent practice in India. The urge to carry the family name in everything is the most illogical but popular system prevailing. They name the business out of their surname and intend to claim rights over the name. Every year more than thousands of trademark applications are filed to claim exclusive rights over the surname, and interestingly, few of them got registered. This may come as a surprise but it is also interesting to note the urge of getting the surname registered as a trademark. Imagine names like Mahindra, Khurana, Luthra, etc., getting registered when we know that families share common surnames. Being a generic nature term and still getting registered is unusual. The reason being: The names can have phonetically similar words. The name is a generic term. Commonly used by other business owners Lacks distinctiveness and uniqueness They can be descriptive. It will restrict others with a similar name to use their surname. Interesting Trivia Sachin Tendulkar has got his surname registered. The names that have acquired a well-known mark like Tata, Birla, Mahindra, Philips, and many more also have trademark protection for their surname. Having said all of these, we have to understand the concept of surname and trademark from two points of view- the statutory point and the judicial point of you. STATUTORY PERSPECTIVE: The Old Trademark and Merchandise Act, 1958 explicitly refuses the trademark registration: surname or personal names. But the new Trademark Act, 1999 does not state denying the trademark on the grounds of the surname. If one has a unique, different, and unusual surname, they can think of registered it as a trademark. Still, it defeats the entire purpose as no exclusive right can be claimed on the mark. It is practically impossible to restrict people from using similar surnames. The “mark” definition doesn’t explicitly include or exclude surnames and personal names from the purview of registration. Therefore, there is always a misconception that such registration is allowed. Legally speaking, the Act does not bluntly refuse the registration of such marks. Two scenarios of surname registration can be identified in India. Since the statute is not very clear on the registration of surnames, time and again, the decisions have been taken based on judicial pronouncements. To understand the concept in a way better, we can cite a few classic case laws. GUIDELINES FOLLOWED BY COURT: If the surname has a distinctive meaning attached to it, then there are higher chances for registration. If the name has no relevance or meaning and is a coined term, it can be considered for registration. If a name has acquired the distinctive reputation of a well-known mark, then it can be registered. The surnames should have a value attached to them in terms of product recognition to acquire a trademark. If the name has no meaning and no distinctiveness and cannot be proved in the Court — cannot be registered. If the name is common to the public- it cannot be registered. Altogether, registration of surnames as a trademark might seem a very off idea because courts have decided against the plaintiff, stating that exclusive monopoly cannot be as such claimed over surnames. This misconception can be cleared by citing the following cases; THE BOTTOM LINE: Whether surnames can be registered or not is always a mixed question of law and fact. The trademark registry, while accepting the trademark for registration, must look into various facts and judicial pronouncements to decide the distinctive characteristic of the surname. This Tug of war between registration of trademark and surname continuous still a settled legal principle evolves. For more info contact us: https://unimarkslegal.com