This Presentation delves into the realm of Trademarks, particularly Name as trademarks across various domains, i.e., India, the U.S.A., and the U.K including case laws.

1. “Name as a Trademark:
India, USA, UK
Perspectives”
Pranav Kushwaha
Roll No: 23IP62036

2. Introduction:

3. Importance of Name as a
Trademark:
Utilizing one's name as a trademark holds significant strategic value in the business world:
1. Identity Establishment: A name serves as a unique identifier, helping businesses stand out in a crowded
market and fostering brand recognition among consumers.
2. Personal Connection: Associating a business with a personal name can create a sense of authenticity and
trustworthiness, enhancing customer loyalty and engagement.
3. Legacy and Reputation: Leveraging personal name can tap into existing goodwill and reputation, especially if
the name is synonymous with quality or expertise.
4. Differentiation: In an era of increasing competition, using a personal or surname as a trademark can
differentiate a business from its counterparts, providing a distinct market positioning.
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4. 4
TRIPS:-
TRIPS Section 2, Article 15 of the Agreement defines ‘Protectable Subject Matter’ as ‘any sign, or any
combination of signs, capable of distinguishing the goods or services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark Such signs, in particular words including personal
names, letters, numerals, figurative elements and combinations of colours as well as any combination of such
signs, shall be eligible for registration as trademarks.’
• Surnames with no significance beyond being surnames may not be registered unless distinctiveness is
proven.
• If a surname has a better-known meaning, it may be registered even without proof of distinctiveness.
• Despite the difficulty in protecting surnames as trademarks, many well-known brands use surnames as
trademarks effectively.
• Examples include Tata, Bajaj, Honda, Ford, Ralph Lauren, Suzuki, Goenka, Mahindra and Mahindra, Sony,
Ranbaxy, Dabur, Aditya Birla Group, Procter and Gamble, Johnson and Johnson.

5. Indian Perspective:
• The Trademark and Merchandise Act, 1958, initially refused the registration of surnames as trademarks under clause (d)
of a Section 9.
• The new Act i.e. The Trade Marks Act, 1999 lacks a specific provision regarding the use of surnames or personal names
as trademarks, leaving it open to interpretation.
• The definition of "mark" in the Act neither explicitly includes nor excludes surnames and personal names but mentions
“name” implying that such registrations are allowed and actively applied for.
• Section 2(1)(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any combination thereof.
• Section 12 of the Trade Marks Act in India allows for the registration of trademarks under the principle of honest and
concurrent use.
• This provision enables the registration of a mark that is identical or similar to an earlier registered mark, provided it can
be demonstrated that through honest and concurrent use, it has gained recognition.
• This provision offers an alternative route to registration besides proving distinctiveness, allowing for the registration of
marks that have acquired recognition through continuous and honest use.

6. CASE STUDY:
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1. Mahendra And Mahendra Seeds Pvt. Ltd. vs Mahindra & Mahindra Ltd 2003 (26) PTC 434 (Guj):
- Plaintiff: Mahindra and Mahindra Ltd.
- Defendant: Mahendra and Mahendra Seeds Pvt Ltd
- Issue: Alleged infringement of trademark by the defendant using a deceptively similar mark.
- Court Decision: Ruled in favour of the plaintiff.
- Observations:
- Despite "Mahindra" being a common surname in India, the plaintiff had acquired distinctiveness and secondary
meaning through continuous use.
- Use by the defendant in a different field of activity would likely cause confusion among the public, indicating
association with the plaintiff.

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2. Dr. Reddy Laboratories v. Reddy Pharmaceuticals 2004 (29) PTC 434 (Del) :
•Plaintiff: Dr. Reddy Laboratories
•Defendant: Reddy Pharmaceuticals
•Issue: Dispute over the use of the name "Reddy" in pharmaceutical products.
•Court Decision: Ruled in favor of the plaintiff.
•Observations:
• Plaintiff had earned significant trade reputation and goodwill with the "Dr. Reddy's" trademark.
• Defendant's use of the "Reddy" mark was deemed to capitalize on the plaintiff's reputation, lacking
honesty and concurrency.
3. Prathibha Singh v. Singh and Associates 2014 (60) PTC 257 (Del):
•Plaintiff: Prathibha Singh
•Defendant: Singh and Associates
•Issue: Alleged infringement of the "Singh & Singh" mark by the defendant.
•Court Decision: Ruled in favor of the defendant.
•Observations:
• Plaintiff claimed secondary meaning in reference to the mark "Singh & Singh" in the field of
Intellectual Property law.
• Court recognized "Singh" as a common surname in India, denying the plaintiff's claim of
monopoly over it.

8. 8
USA Perspective:
• A mark is a shorthand term referring to trademarks, service marks, collective marks, and certification marks.
• 15 U.S.C. § 1127 explains definition of Trademark and its different kind.
• The term “trademark” includes any word, name, symbol, or device, or any combination thereof.
• There is no absolute right to use your own name as a trademark, but it is possible to do so under certain circumstances.
• Under U.S. trademark law, a Mark "primarily merely a surname" cannot be protected without proof that it has "acquired
distinctiveness.”
• In the United States, you can only own a trademark that includes a personal name if you have used or intend to use it in
commerce.
• The TTAB(Trademark Trial and Appeal Board) In re Benthin Mgmt. GmbH 37 USPQ2d 1332 (TTAB 1995)
Held that generally, five factors will be considered to determine if acquired distinctiveness must be shown:
1. Whether the surname is rare;
2. Whether the term is the surname of anyone connected with the applicant;
3. Whether the term has any recognized meaning other than as a surname;
4. Whether it has the "look and feel" of a surname; and
5. Whether the stylization of letters is distinctive enough to create a separate commercial impression.

9. UK Perspective:
• As per Section 1 of the Trade Marks Act, 1994, “A trademark may, in particular, consist of words (including personal names),
designs, letters, numerals, colors, sounds or the shape of goods or their packaging.”
• Permitted: Personal names can be registered as trademarks in the UK, except for names of members of the Royal Family.
• No Superior Right: Applicants do not have a superior right to register their own name as a trademark.
• Examination Process: Every application is checked against earlier trademarks on the UK register. The examiner identifies conflicts
with earlier marks and alerts owners of those marks. Oppositions can be submitted by third parties with prior marks, and if
successful, the application may be refused.
• In the UK, registering personal names as trademarks involves two scenarios.
1. If a prior registered trademark with a similar name exists, an application to register a personal name may be refused subject
to owner opposition.
2. Despite existing registered trademarks with similar names, individuals can still register their own name as a trademark
subject to section 11(2)(a).
• Applications to register a famous individual's name if not made by the individual concerned must be accompanied by written letter
of consent from the individual concerned. Without consent, the application will be refused under section 3(6) of the UK Trade
Marks Act 1994.

10. Case Study:
Tiffany & Co. vs. Tiffany Parmar (O-010-20)
Background:
In 2020, UK resident Tiffany Parmar sought to trademark “Cotswold Lashes By Tiffany" for her lash business. The iconic jewelry
brand Tiffany & Co. opposed, citing potential confusion with their established name.
Outcomes:-
The UKIPO found in favor of Tiffany & Co., refusing Tiffany Parmar's registration. Despite Tiffany Parmar incorporating her personal
name into the mark, the UKIPO ruled that her application conflicted with Tiffany & Co.'s prior rights in the name "Tiffany."
Key Points:
Consumer Confusion: Despite Parmar's use of her first name, the UKIPO deemed it insufficient to distinguish her lash business
from Tiffany & Co.'s jewelry products.
Prior Rights: Tiffany & Co. successfully defended their established reputation and prior rights to the name "Tiffany" in the UK
market.
Personal Names in Trademarks: While permitted, trademark applicants must consider existing trademarks and potential conflicts.
Conclusion:
Overall, the case highlights the complexities involved in registering personal names as trademarks and underscores the importance
of considering prior rights and obtaining necessary consent.

11. Case Study:
Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2000] EWHC 3032 (Ch):
1. Case Background:
- Involved a dispute between Hotel Cipriani Srl and Cipriani (Grosvenor Street) Ltd.
- Hotel Cipriani Srl operated a hotel under the name "Cipriani" in Italy.
- Cipriani (Grosvenor Street) Ltd intended to open a hotel in London under the same name.
2. Use of Misleading Name:
- Cipriani (Grosvenor Street) Ltd intended to use the name "Cipriani" for their London hotel.
- This was despite the existence of the Hotel Cipriani Srl's established hotel in Italy.
3. Section 11(2)(a) Defense:
- Cipriani (Grosvenor Street) Ltd intended to use their own name under section 11(2)(a) of the UK Trade Marks Act 1994.
- This provision allows individuals to use their own name in trade without infringing on a registered trademark.
- States that “A registered trade mark is not infringed by the use by an individual of his own name or address”. This can be used as a defence
against claims of trade mark infringement.
4. Court's Ruling:
- The Court of Appeal ruled that intentionally using a misleading name to take advantage of section 11(2)(a) defense constitutes dishonesty.
- Using a misleading name in such a manner is not permissible under honest practices.
5. Outcome:
- Cipriani (Grosvenor Street) Ltd's attempt to use the name "Cipriani" for their London hotel was deemed dishonest and impermissible.
- The ruling upheld the integrity of trademark laws and prevented unfair advantage through misleading naming practices.

12. 12
Aspect India USA UK
Legislation The Trade Marks Act, 1999 15 U.S.C. § 1127 Trade Marks Act, 1994
Treatment of
Surnames/Personal Names
Open to interpretation; not
explicitly addressed
Not protected without acquired
distinctiveness
Permitted, subject to certain
conditions
Criteria for Registration
Must prove distinctiveness; well-
known surnames can be
registered
Requires acquired
distinctiveness; factors include
rarity, connection, meaning,
structure, distinctiveness
Can be registered, subject to
consent and certain conditions
Protection of Well-Known
Surnames
Yes Yes Yes, with consent of individual
Legal Precedents
Mahindra and Mahindra v.
Mahendra and Mahendra, Dr.
Reddy Laboratories v. Reddy
Pharmaceuticals, Prathibha Singh
v. Singh and Associates
In re Benthin Mgmt. GmbH,
cases involving “5 factor test”
Hotel Cipriani Srl v Cipriani
(Grosvenor Street) Ltd
Defense for Personal Name
Usage
Recognized with acquired
distinctiveness & Secondary
meaning or section 12.
Recognized under certain
conditions
Recognized, with consent or
under section 11(2)(a)
Considerations for Trademarking
Personal Names
Requires distinctiveness; risk of
rejection if merely a surname
Must demonstrate acquired
distinctiveness; risk of rejection if
primarily merely a surname
Must meet certain conditions;
risk of rejection if misleading or
primarily merely a surname

13. Thank you
Pranav Kushwaha
prnvkush@kgpian.iitkgp.ac.in