When it comes to trademarks, a familiar yet crucial question arises whether ‘names’ can be registered under trademark protection in India. Section 9(d) of The Trademark and Merchandise Act, 1958 explicitly refused the trademark of personal names and surnames. However, the new law, i.e. the Trade Marks Act, 1999, lacks any provision to include or exclude personal names or surnames from getting trademark protection.
The general rule that prevails is that a name or a surname cannot be given protection under the trademark if it does not have a distinguishing character. This means that personal names or surnames can be registered as a trademark when it bears some distinctiveness. Even though it is challenging to protect surnames or personal names as trademarks, we are surrounded by many surnames that have successfully attained trademark protection. Few examples include Suzuki, Ford, Tata, Mahindra, Sony, Honda, Bajaj etc. The court has clarified the position regarding surnames from time to time in several cases. Regarding this, the courts have come to the following stance:
- If the proposed term for registration does not have any other meaning than a surname, it cannot be registered unless the applicant shows distinctiveness.
- If the word proposed for registration has a “well recognized” meaning other than a mere surname, then it can be registered even if no proof of distinctiveness is provided.
The U.S. courts also believe that some acquired distinctiveness must be demonstrated if the name is predominantly a surname. If the name is personal, you may use it as a trademark as long as a namesake does not come first, which means that your proposed personal name would not confuse you with a similar name currently used for connected goods or services. Henceforth we see that many celebrities such as Rihanna, Taylor Swift, Kylie Jenner, etc., have successfully acquired a trademark for their names.
Indian celebrities lag behind the celebrities of the west in trademark registration; they can’t truly blame the law for this. As the Trademarks Act of 1999 contains no specific provision allowing or prohibiting the registration of names, it is safe to presume that registration of a personal name is permitted. According to Section 2(zb) of the Trademarks Act, 1999, “Trademark” refers to a mark that may be represented graphically and that can differentiate one person’s goods or services from those of another, and can include the shape of the goods, their packaging, and colour combinations. A careful reading of the definition reveals that a trademark cannot be registered in itself to protect a person’s brand value.
In India, celebrities have begun to register their names as trademarks. Such is done to protect the name from being misappropriated. It also restricts commercial use, which includes films, television, and commercials. There are various examples of celebrities who have trademarked their names. Kajol has filed trademark applications in many categories, including telecommunications, websites, household goods, carpets, bags. Sanjeev Kapoor owns the trademark ‘SANJEEV KAPOOR KHAZANA,’ which is registered under Class 29 of the Trademark Act.
The Indian courts have from time to time delivered judgments posing affirmative response to the protection of names as surnames in the country. For instance, in D.M. Entertainment v. e and Ors, a well-known Indian singer and composer sued the defendant for registering the domain name dalermehndi.net. The defendant was barred from using the trademark DALER MEHNDI by the Delhi High Court and recognized the fame and reputation attached to the performer’s name.
In summary, it can be observed that personal names and surnames may attain trademark protection when it has acquired distinctiveness or has become well known. Celebrities in India are increasingly pursuing trademark protection for their names. In India, the trend appears toward defensive registration to protect the celebrity’s reputation rather than on actual goods or services, which contrasts with the practice elsewhere.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.