Monday, August 17, 2015

The Myth of Surnames

Starting a business in India in the name or surname of a person isn't a new concept. Several businessmen associate their businesses with their names. Though the protection of surnames as trademarks is difficult, we still have several examples of the same, viz., Dabur, Tata, Goenka, Khaitan, HP, Jimmy Choo, Honda all around the world.

The Trade Mark and Merchandise Act, 1958 under Section 9 refused to afford surnames the protection of trademarks. However, the Trademarks Act, 1999 has no provision to allow or disallow the use of surname of personal names. The definition of the term “trademark” under Section 2(zb) provides that it is a mark capable of being represented graphically and which is capable of distinguishing goods and services of one person from that of others. The definition of the "mark" doesn't explicitly include or exclude surnames and personal names. Thus it is assumed that such registration is allowed, and hence, even applied for.

Though it is generally assumed that surnames may be registered as trademarks since the new Act doesn’t disallow it specifically, it may not be registered unless proof of distinctiveness is shown. This is done to prevent differentiation among the goods of proprietors of same names. Thus, a person cannot claim monopoly over a surname that is common to others.

The Courts has held in the cases of Mahindra and Mahindra v. Mahendra and Mahendra [2003 (26) PTC 434 (Guj)] and Dr Reddy Laboratories v. Reddy Pharmaceuticals [2004 (29) PTC 434 (Del)] that where the word has a better known meaning, other than as a surname it may be regarded as a non-ordinary one for being accepted for registration as a trade mark. A surname is of “ordinary significance” when the word has no other significance except that of a surname, however rare or unique the surname may be.

The other practice regarding surnames as trademarks in India is; where the word propounded for registration has a “better known” meaning attached to it, then it is regarded as a non-ordinary one, then registration may be granted even if no proof of distinctiveness is shown.

Thus, we have several surnames like Tata, Honda, Mahindra and Mahindra who have acquired the required protection under the Act and are infact well known trade marks under Section 11. The key to protection of surnames is in the ‘acquired distinctiveness’ which doesn’t provide exclusive rights to the owner but does make it tougher for another person to register it as a mark.

Nayanika Singhal