INTRODUCTION
I’ve come across several inquiries on whether they can use their names or last names as brand names, is it against the law for a legitimate user to operate under their own name?
Can someone be prosecuted for trademark infringement if they use their own name or last name as a trademark? Is it legal to simply use a trademark for personal purposes and not to provide licenses?
The Indian Trademarks Act addresses these problems by allowing only bonafide users of a registered trademark to fall beyond the scope of trademark infringement. The Indian Trademarks Act, 1999, Section 35, prohibits the owner of a registered trademark from interfering with any legitimate use of his own name by a person.
In Latin, the word “bonafide” means “in good faith.”
In the context of section 35 of the Trademarks Act, “bona fide use” refers to a person’s honest use of his own name without any desire to deceive others or to capitalize on the goodwill accumulated by another merchant.
The courts have often ruled, using Section 35 of the Trade Marks Act, that even a registered user or registered trademark owner cannot impede a person from using his own name in good faith.
The Honourable Supreme Court has ruled that legitimate use of a surname is a fundamental right and does not constitute trademark infringement in a number of circumstances.
Provision of Section 35 of the Indian Trademarks 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.”
Thus, even a registered proprietor cannot prohibit the use of one’s name or surname in the course of business as long as it is done legitimately.
Even if those names have previously been registered by another corporation, courts across our nation have been defending the legitimate rights of people to use their own names, surnames, or complete names in their enterprises.
The Supreme Court of India affirmed the terms of section 35 of the Trademark Act, 1999 in the case of Precious Jewels v. Varun Gems.
In this case, the owners of the registered trademark “RAKYAN” had already won injunction orders against a different business entity that was using the mark “Neena and Ravi Rakyan” in relation to a jewellery business in the Delhi High Court.
In deciding the appeal, the Supreme Court looked at the case’s facts and found that, in light of section 35 of the Trademarks Act’s provisions, the injunction order was unfair because the defendants were operating their businesses in their own names, which constituted bona fide usage. Except for the use of the name “RAKYAN,” there was also no similarity between the business hoardings.
As a result, the Delhi High Court’s ruling granting an interim injunction was quashed.
It is important for the defendant to demonstrate that the use of the registered brand was solely legitimate and had no negative effects on the trademark holder’s goodwill or business.
Whereas,
The Delhi High Court in Manju Monga v. Manju Mittal– that the defendant’s use of the trade name “Manju Cookery Classes” obviously constitutes trademark infringement and is therefore ineligible for protection under Section 35 of the Trademarks Act, 1999.
The defendant’s desire to use the same name was motivated by malafide in order to damage the reputation of the plaintiff’s company and was not shown as a bona fide usage.
CONCLUSION
Section 35 of the Trademarks Act, 1999 was created with the intention of protecting the legitimate right of individuals to use their own names without violating the rights of the trademark proprietor.
However, when the mark is confusingly similar to the mark of the registered proprietor, it can be said with certainty that bona fide use of a person’s name does not extend to providing licenses of the same to other businesses. Therefore, in light of the Anil Rathi Judgment, the law of legitimate usage with relation to use as well as a grant of trademarks has been significantly settled.
For any type of assistance feel free to contact or reach us at: – MG Associates (Company Secretaries)- CS Manisha Mittal – 70152-77705
Disclaimer: The information presented here is only meant to be informative. Although this article was carefully crafted, it should only be regarded as general advice because it has been expressed in general terms. You should not act on the information provided in this article or refrain from acting upon it without first seeking professional advice since it cannot be relied upon to address your unique situation
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