Trademarking Names and Surnames

The present article is written by Sagnik Bhaumik, from S.K Acharya Institute of Law, Kalyani University discussing about registration of names/surnames as trademark.

Introduction

Trade, commerce and business are the biggest source of income of any nation. In today’s era all the goods and services are traded and judged by their name or identification marks. But due to the numerous growth of business activity, here is the importance of having a unique logo or identification mark for all the business entities. That’s why, there was essence of enacting laws regarding trademarks.

Trademark

Trademark is one kind of intellectual property rights. Every trader needs to sell their own goods or service under the name of their company or business. That’s the reason why each of them should register their name under the Trademark Act to have a special identification mark to run their trade or business.

The term “trademark” is defined under section 2(zb) of Trademark Act, 1999 as a mark capable of being represented graphically and which is capable of distinguishing the goods and service of one person from those of others and may include shape of goods, their packaging and combination of colours.

Registration of Trademark

Trademark maybe registered as well as unregistered. The registration is not compulsory. But the registration offers a pima-facie evidence of ownership of evidence but in case of non-registration the trademarks holder has to use the prior use of it.

Conditions and the Grounds of Registration

Sec 3-17 of the Trademark Act, 1999 provides the conditions and grounds of registration of trademark under this Act. Carrying on any trade or business by the name or surname of any individual is not a new concept. Often we find such kinds of various instance in our surroundings. And this numbers are gradually increasing with an intention to create an inner-link between the family and business. But often it may create some problems and confusions among the people in general as because lots of different entities can have the same name or surnames as trademark. That’s because some relevant factors must be considered before granting registration as mentioned in the provision of this Act.

Those are —

  1. Absolute grounds for refusal of registration,
  2. Limitation as to colour,
  3. Honest and concurrent uses,
  4. Names of chemical evidence,
  5. Names and representations of living person or persons who recently
    died.

So, all the trademarks are not subject to registration. All the trademarks must fulfill some criteria or conditions to be accepted for trademarks under the law. Those grounds are again classified into two grounds – absolute ground and relative grounds.

Absolute Grounds for refusal of registration

Under Section 9 following categories of trademarks shall not be registered. Those are –

(a) Which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.
(b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
(c) Which consist exclusively of marks or indications, which have become customary in the current language or in the bona-fide and established practices of the trade.
(d) It is of such nature as to deceive the public or cause confusion.
(e) It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
(f) It comprises or contains scandalous or obscene matter.
(g) Its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950.

Names of chemical elements or international non- proprietary names

Not to be registered –

No word, which is commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name, shall be registered as a trademark.

Names and representations of living persons or persons who recently
died –

Where an application is made for the registration of a trademark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trademark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trademark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent. The reason for excluding names of living or dead persons may be to avoid and prevent commercial use of such names on the ground of emotional relationship of their family members.

Registration of Surname-

The provision regarding the registration of surname was not permitted under The Trademark and Merchandise Act, 1958. But subsequently Trademark Act, 1999 was enacted which was partially silent about the provision regarding the registration of surname. The term “mark” as defined under section 2(m) of this Act doesn’t expressly mention the term “surname” but it is assumed that even surname is impliedly included within the provision of ‘name’ under section 2(m).

It is to some extent true that – registration of surname as trademark is difficult but we have lots of instance in our surroundings. Some judicial approaches are also there where in some case the registration was granted but in some other cases the applications
of registration was rejected.

Registration Allowed –

CADBURY – for confectionary.

TOEFANI – for cigarettes on the proof of extensive users.

Registration Refused –

SPICER – no evidence of distinctiveness

ZIMMER – no evidence of distinctiveness

So it is to some extent true that names and surnames can be registered as trademark under the Trademark Act, 1999. Even it is also true that lots of procedures and verifications must be conducted before granting verification under the law just because to prevent any kinds of problems, confusions or conflicts among the people in large.To learn more about Trademarks check our course on Trademark Law at https://ledroitindia.com/courses/trademark-law/

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