Can a name be Trade Marked?

The possibilities of types of trade marks that can be registered in India are vast. It is possible to register an invented word or any arbitrary dictionary word or words; letters or numerals or any combination thereof; fancy devices and symbols; monograms and combination of colours; marks constituting a 3 dimensional design or even sound marks. However, a lot of entrepreneurs prefer having their establishments or brands identified with their family names. Thus, an important question arises: can a name be trade marked? In today’s post we will assess as to whether names can be trade marked under the Trade Mark law.

The object of The Trade Marks Act, 1999 (“Trade Mark law”) is to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. Thus, a trade mark is registrable only if it satisfies the following grounds¹:

1. The mark should be capable of being represented graphically;
2. The mark should be capable of distinguishing the goods or services of one person from those of the others; and
3. The mark is used in relation to goods or services for the purpose of indicating or so as to indicate a convection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor or by way of permitted user to use the mark.

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Irony is that, although a name is a proper noun, however most people have the same first and/ or last names making the names per se pretty common. This aspect therefore conflicts with the fact that “a mark should be capable of distinguishing the goods or services of one person from those of the others“. Therefore the question of capability for distinguishing of the name will essentially depend upon how common the name is. It is only fair that every trader has a right to trade in his or his family’s name and should be hampered in its use². However, when a person chooses to use his name or surname, that name may not be adapted to distinguish the goods or services of that person from those of another having the same surname. Hence, a name or a surname ideally would fail the second ground of register-ability as mentioned herein above. In view of this, an application for registration of a name or a surname would generally be critically assessed and tested if the distinctive/ distinguishing character is established.

In dealing with an application to register a personal name, the following factors should be taken into consideration³:

1. The extent to which the user has rendered the mark distinctive of the respective goods;
2. The probability of this degree of distinctiveness being maintained in the future;
3. The characteristics of the name, as in how common or uncommon the name is;
4. The trade in which the name is employed;
5. The class of goods to which the mark is distinctive and the way it is used in connection with them;
6. The extent to which a registration will control the freedom of individuals of the same name;
7. Will registration of the name tend to protect the public from imposition or reverse.

Concluding our post, the answer to the question that can a name be trade marked is rather complex. It is not that names and surnames cannot completely be trade marked, however, one has to prima facie establish a concrete distinctiveness in the name that is intended to be registered as a trade mark.

You may be interested | Trade Mark Application Procedure [Click here to read]

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References

1. P. Narayanan, Law of Trade Marks and Passing off, Sixth Edition, Eastern Law House, 2017, p. 142

2. Ibid. p. 154

3. Ibid, at p. 156; and See Burford’s Application (1919)36 RPC 139 at 150