‘SURNAMES: CAN YOU MAKE YOUR MARK LEGALLY’

What's in a name? That which we call a rose by any other name would smell as sweet.

~William Shakespeare, Romeo and Juliet

Shakespeare believed that name does not matter, what matters is what a person is. He also was
convinced that people will still smell a rose and appreciate its beauty, even if it was called it by
some other name.

But these lines, I am afraid, do not hold true in today’s globalised environment where the quality
and the worth of the product is gauged by the name of the manufacturer they are coming from.

This paper examines the scope of protection being offered to the family names as trademarks,
against the freedom of using one’s own family name as a trademark. This paper also analyses the
rights and protection that should be afforded to the people who are late entrants into a specific
business.

India and Family Name

"If you believe in yourself and the business, you should put your family name on the line," Uday
Kotak, Vice Chairman, Kotak Mahindra Bank. This statement by Mr. Uday Kotak speaks a
thousand words about the attachment of Indian entrepreneurs to their family names. And Kotak
Mahindra Bank derives its name from its collaboration with Mahindra & Mahindra, more
particularly with the Mr. Anand Mahindra, Vice-Chairman & MD. Be it at small, medium or
large scale, each company has tried to create an indelible mark in the minds of their customers by
manipulating the intangible assets of trust and relationship building. Whether it was Jamsetji’s
Tata or Dr. S.K Burman’s Dabur or Karam Chand Thapar’s Thapar Group of Industries or
Parvinder Singh’s Ranbaxy or Munjal’s Hero Motors or S P Godrej’s Godrej Industries, each
one of them have nurtured their brand names with patient and dedicated hard work which has
ensured consistent quality of their products in the market place.

There is a practice in India that any new entrepreneur would be inclined to start up a venture with
his family name so as to continue the legacy. And there is even stronger inclination to prohibit

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someone from using their family name in a way which undermines the goodwill acquired by the
family name over a period of time.

Trade Marks Act, 1999: Legal Position

Subject to certain qualifications, a trademark may be a name adopted and used by a producer or
dealer to designate goods that he produces or sells and to distinguish them from those produced
or sold by another.1 However, as in the case of names or surnames, they are not subject to
exclusive appropriation as a trademark or a tradename, although a preferential right to the use
thereof may be acquired.

The word “Name” is defined under Section 2(o) of the 1999 Act, but the definition is inclusive
saying that the expression includes any abbreviation of a name. The meaning, hence, for the
purpose of the Trade marks Act, connotes the name, surname, or a person or name of a group or
any legal entity.

The individuals or legal entities bearing the same name can be multiples and therefore a name is
not capable of distinguishing the goods or services belonging to one from the other. It is
however, possible to register a surname upon proof of its distinctiveness.2 Section 9 (1)(a) of the
Act, specifies that the name of a company, individual or a firm can be considered distinct only if
it is represented “in special or particular manner”.

A surname if, has acquired distinctiveness may be registered as a trademark. For example, the
surnames Bajaj, Godrej, Tata, and Mahindra are registered as trademarks as they have acquired
distinctiveness with respect to the goods with which they are associated before an application for
their registration is made.3

Prima facie therefore, the question of capability for distinguishing a name will basically depend
upon the commonness of that name. The question whether a surname is common or rare one and
if so, how common or how rare it is, was taken up by the Court in Union Carbide’s Application4.
Court held that the entries in telephone directories offer some guide but are not conclusive on the
1
Parkland Hills Blue Lick Water Co. v. Hawkins, 95 Ky 502, 26 SW 389.
2
Section- 9(1) proviso, The Trade Marks Act, 1999.
3
Paul, M, Intellectual Property Laws, First Edition, p 310.
4
(1952)69 RPC 306.
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point. There has not been any such reference to the telephone directories made by any of the
Indian Courts, but may prove to be handy if relied upon any time in future.

An application for registration of a surname ought to be most closely scrutinized, and the
acceptance of it obtained only where its distinctive character is quite clearly established.5

Section - 35 of The Trade Marks Act, 1999 provides that the registered proprietor or the
registered user cannot interfere with any bona fide use by a person of his own name or his
predecessor in business, his place of business or bona fide description of the character of quality
of the goods or services.

But even under this provision there is the requirement of the bonafide use of the trademark
without any intention to deceit the consumer at large. The same was held by the Delhi High court
in the case of Anjani Kr. Goenka & Anr. v. Goenka Institute of Education & Research6. The
Defendants vehemently argued that the use of the name GOENKA for running a trust, school,
college, and pharmacy and girls college must be considered as bona fide use owing to the same
being a common surname, and falling under the scope of Section 35 of the Trademarks Act,
1999. But the court held that by virtue of long use of the mark GOENKA since 1994 it had
acquired distinctive character. The Honorable High Court also held that bona fide use meant the
honest use by a 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.

Court also ruled that the use of the name GOENKA amounted to the act of “passing off”. To
decide this question, Court relied on Warnik v. Townend & Sons (HULL) Ltd.7, to determine if
there was an instance of passing off in the present case. The essentials of passing off as laid
down in that case are:

• Misrepresentation made by trader in the course of trade to the prospective or ultimate

consumers;
• calculated to injure the business or goodwill of another trader;

5
Teofani v. Teofani (1913) 30 RPC 446 at 461 (CA)
6
2009 (39) PTC 720 (Del.)
7
1979 AC 731
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 • causes actual damage to the business or goodwill of the trader by whom the action is
brought.

‘Freedom to use one’s own name’ vs. ‘Confusion caused in the minds of Consumer’

The rationale behind the theory of “freedom to use one’s own name” is often connected with a
statement that personal names are free to be used by all persons of that name: “In a technical
sense, there can be no trademark in the name of a person, because all such names are generic,
and because, speaking in a general sense, every person has the right to use his own name for the
purpose of trade.”8 Other courts have simply stated the secondary meaning requirement in terms
of the alleged “right” to use one’s own name: “… ordinarily personal names may not become
trademarks because, as between persons of the same or similar names, each has an equal right to
use his own name in his own business.9

However, such an absolute right would infringe upon the right of protection of the senior user’s
mark with the defense of the right to use one’s own name which the junior user will raise.

Every time there is a conflict over the use of a personal name as a mark, the later entrant into the
market will assert as a defense the concept that everyone should have a right to use his own name
in business. And this would be an assertion even after the prior entrant has built up a
considerable amount of goodwill and consumer recognition. Such an assertion would be a
serious injury to the business of the prior entrant who has put in hard work and persevered to
acquire goodwill and consumer recognition.

Following the view of “absolute right”, some US courts had characterized the right to use one’s
own name in business as a “sacred right”10.

8
Drake Medicine Co. v. Glessner, 68 Ohio 337, 67 N.E. 722 (1893)
9
Ida May Co. v. Ensign, 20 Cal. App. 2d 339, 66 P.2d 727 (1937)
10
D&W Food Corp. v. Graham. 134 Cal. App. 2d 668, 286 P.2d 77, 107 USPQ 24 (1995).
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Secondary Meaning and Indian Courts: Existing Jurisprudence

Personal names are considered to be non-inherently distinctive terms which require proof
secondary meaning. As of personal names not being inherently distinctive marks, the only way
that they can be protected as trademarks is upon the proof that through a continuous usage, they
have acquired distinctiveness and secondary meaning. Surnames usually acquire legally
protectable status only after they have had such an impact upon a substantial part of the buying
public as to have in turn acquired “secondary meaning”.

Hence “secondary meaning” means that the public has come to recognize the personal name as a
symbol that identifies and distinguishes the goods or services of only one seller.11 A similar view
point has been. Delhi High Court, on the same lines had passed an order in the case of Rajinder
Kumar Aggarwal v. Union of India and Anr.12, where the Court held, “the word “AGGARWAL”
passes the first test in as much as it has no direct reference to the character or the quality of the
goods in question i.e., sweets and namkeen. But, it fails the second test. It is a surname and it is
also a name of the sect/caste in India.” Court also held that it is possible that a proprietor may be
using a mark for decades without acquiring distinctiveness. It held further, it is necessary to
combine evidence of the scale of use provided by the financial information with evidence that
the use has been so as to distinguish – on the product, in relation to the service, in advertising or
promotion.

Court finally concluded by saying, mere evidence of use is not sufficient in itself to establish
distinctiveness. Unless and until distinctiveness is proved, a word such as AGGARWAL which
happens to be a surname is “not registrable”.

As previously noted, in the case Anjani Kr. Goenka & Anr. v. Goenka Institute of Education &
Research13, Court held that “by virtue of long use of the mark” GOENKA since 1994 it had
“acquired distinctive character”. The Honorable High Court also held that bona fide use meant

11
Cassidy, “Surnames as Trademarks,” 41 Trade Mark R.299 (1951).
12
WP (C) No, 19678/2004, judgment delivered on 09 July, 2007.
13
2009 (39) PTC 720 (Del.)
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the honest use by a 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.

Hence, once secondary meaning is established in a surname, it would be afforded almost the
same protection as if it were an arbitrary technical mark at its inception.

The rationale behind the “secondary meaning” may be that such use of surnames is not
inherently distinctive and it does not pinpoint one source of all goods that are described by the
mark. As there may be many people with the common surname and in that case there would not
be any surety in the minds of the consumers as to what is the exact source of such goods. Hence
the requirement that the product should have acquired “secondary meaning”, that is the public
has come to recognize the personally name as a symbol that identifies and distinguishes the
goods or services of only one seller.

Hence, the courts have progressed from the early view that one’s use of his name would never be
interfered with, to a modern view placing personal name marks on almost the same footing with
any other type of mark.

Thus, persons with names that are the same as strong and famous personal name trademarks have
no “right” to confuse the public by engaging in certain businesses under their name. “[A] person
has no right to use his name as a trademark simply because of the fortuity of his parents and their
choice of names. The world is full of people who cannot use their names in whole industries:
Marriott in motels, Hugheses in oil tools and Mc Donalds in fast foods.”14

New Approach

If another person with the same name uses sufficient distinguishing features with the name, a
likelihood of confusion may be prevented. For example, where defendant Harry P. Lebow was
an employee of his father’s LEBOW clothing firm, which was sold to plaintiff, defendant’s use
of full name HARRY LEBOW in designing clothes was held not to cause confusion.15 Similarly,
PAOLO GUCCI, grandson of the founder of the company uses the famous GUCCI mark on his
14
W-K-M Div. of Joy Mfg. Co. v. WK Industries, 2 USPQ2d 1967 (S.D. Tex. 1987)
15
Abraham Zion Corp. v. Lebow, 593 F. Supp. 551, 225 USPQ 173 (S.D.N.Y. 1984)
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name as a trademark or tradename, but was permitted to use his full name to identify himself as
the designer of the products marketed under a different mark, so long as he uses a disclaimer that
he is no longer connected with any of the GUCCI COMPANIES, e.g. an AMERICAN
TOURISTER suitcase bearing a label stating “Designed by Paolo Gucci”.16

A very similar view point was put forth by the Court in the case of Anjani Kr. Goenka & Anr. v.
Goenka Institute of Education & Research17, where the Court after refusing the use of the name
GOENKA by Goenka Institute of Education & Research, allowed the usage of the names Mohini
Devi Goenka Mahila Mahavidalaya, Mohini Devi Goenka Girls B. Ed College, Mohini Devi
Goenka Mahila Mahavidalaya and Goenka Shiksha Avam Sodh Sansthan, owing to these being
full names which would not create any deception.

So the bottom-line is that the use of the same name may be allowed in the cases where it is a
mark which would not create any deception and is seemingly different from the alleged infringed
trademark. As long as there is no deception being created in the minds of consumer, the Court
may be lenient towards the use of same surname as a mark by more than one user.

Conclusion

A surname cannot be adapted to distinguish the goods of one person from those of other person
bearing the same surname, and hence cannot be afforded a protection under the Trade Marks
Act, 1999. However it is possible to register a surname upon proof of its distinctiveness as per
the proviso of Section – 9(1). The basic idea behind such a condition is to provide certain
measures for protection of a consumer against such products which may create confusion in the
minds of the consumer as to the origin of the product.

So, the manner of representation has to be such that the mark when placed on the goods or on
material relating to the services indicates that they are goods or services as distinguished from
the goods or services of others having the same name, invented word or a word, which is per se
capable of distinguishing as a prominent feature.

16
Gucci v. Gucci Shops, Inc., 688 F.Supp. 916, 7 USPQ2d 1833 (SDNY 1988)
17
2009 (39) PTC 720 (Del.)
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Protection of the interests of the consumer against any unfair trade practice or deceptively similar
goods and the protection of the person using his name or surname as a trademark for his product
are not mutually exclusive rather are ancillary to each other.

Hence, against the “absolute right” to use one’s own name or surname, to the concept of
“qualified right” to use one’s own name as a mark seems to be more appropriate in the scenario
where there is multiplicity of people having the same name or surname.

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