Names As Trademarks In India

INTRODUCTION

Trademarks are essential in the field of intellectual property because they allow products and services to be easily distinguished in the marketplace. The Trademarks Act, 1999 permits names to be registered as trademarks in India. All names are not, however, eligible for registration. This article explores the intricacies of registering names as trademarks in India, looking at the Standards for Naming as Trademark Registration.

HISTORY

Prior to its repeal, Section 9(d) of the Trademark and Merchandise Act, 1958 expressly prohibited the registration of personal names or surnames as trademarks. Nevertheless, no such restriction is there in the Trademark Act of 1999 as Section 2 of the Trademarks Act of 1999 hardwires the following provisions.

A "mark" is defined as a name and its abbreviations under Sections 2(1)(m) and 2(1)(o). But in order to be eligible for registration, a trademark needs to fulfill specific requirements stated in Sections 2(1)(zb) and 9(1)(a), guaranteeing that it is unique and able to differentiate products from services.

However, merely requesting a name does not suffice; it must also fulfill the requirements for registration:

• If a brand is well-known or has gained uniqueness through earlier usage, registration is permitted under Section 9(1) proviso.
• In certain situations, Section 12 allows numerous proprietors to register.
• Written consent is required under Section 14 in situations where there are deceptive claims of affiliation with living or deceased individuals.

Although names can be registered as trademarks, this can be difficult in cases when a large number of people have similar names and surnames. Despite this difficulty, several brand names—like BAJAJ, TATA, and JINDAL, among others—have names and surnames that are protected by intellectual property regulations.

INDIAN COURTS ON SURNAMES' ACQUIRED UNIQUENESS AS TRADEMARKS

The respondents (Mahindra and Mahindra Ltd.) sued the appellants (Mahindra and Mahindra Paper Mills) in the matter of Mahindra and Mahindra Paper Mill v. Mahindra and Mahindra Ltd. for using the name "MAHINDRA" as their trademark. The respondent claimed that the paper mill's use of the mark "MAHINDRA" is nearly phonetically, aesthetically, and structurally identical to its registered mark "MAHINDRA," and in any case, deceptively similar. The appellants were prohibited from using the trademark MAHINDRA by the Honorable Supreme Court, which held that,

"For more than 50 years, the Plaintiff has used its surname, "MAHINDRA," as its mark. Over that time, it has grown in recognition and is now connected to a particular caliber of product. If another person uses the name in business, it can lead others to believe that they are affiliated with Mahindra, which could be detrimental to Mahindra's operations”.

In the same vein, the Hon'ble Delhi High Court noted in the case of Honda Motors Co. Ltd. v. Charanjit Singh and Ors. that the trademark Honda "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". The Court derived this opinion from the founder of the aforementioned company.

The plaintiff in Manju Monga v. Manju Mittal argued that the word "MANJU" and Cookery lessons were essential components of her trademark and had gained goodwill. The plaintiff was using the mark "MANJU MONGA COOKING CLASS". The plaintiff claimed that the defendant had violated its trademark rights and engaged in unethical trading practices by using the mark "MANJU MITTAL'S COOKERY CLASSES". The Hon'ble Delhi High Court ruled that the defendant could not use the name "MANJU" for "Cookery Classes" exclusively and could not copy the plaintiff's color scheme and style.

In an attempt to achieve parity, the Court permitted the defendant to substitute "MANJU MITTAL COOKERY HOUSE" or "MANJU MITTAL TRAINING CENTRE" for "MANJU MITTAL COOKERY CLASSES" in her photographs. The stipulation is that the defendant must consistently use her name "MANJU" and surname "MITTAL" as a single word, i.e., "MANJUMITTAL."

CONCLUSION

In India, names can be registered as trademarks if they meet specific criteria, primarily focusing on uniqueness, non-descriptiveness, and adherence to legal requirements. A unique name distinguishes the goods or services from others in the market, while a non-descriptive name avoids merely conveying the nature or quality of the products, as such terms often lack distinctiveness. Additionally, the name must comply with the Trademarks Act of 1999, ensuring it does not conflict with existing trademarks or mislead consumers. However, several limitations must be considered during the trademarking process. Potential challenges include the risk of opposition from existing trademark holders, territorial limitations on rights, and enforcement difficulties if the name is not registered. Furthermore, the evolving nature of markets can impact the distinctiveness of a name over time, necessitating proactive brand management. Therefore, while registering a name as a trademark offers significant advantages, it requires careful consideration and strategic planning to navigate these complexities successfully.

Disclaimer: This article was first published in the S&A Law Offices - 'Intellectual Property (IP-Tech)' newsletter in October 2024.