Well, if you have a unique surname then you’ll not only have difficulties in explaining to people how to get it right but you will also have the difficulty in getting it registered as a trademark in India.  Having said that, there are obviously many discrepancies between the law and the judgments and what is actually happening.

What makes me say that? That is because I picked a few Indian surnames and conducted a quick search of the trademark records. Of course Sachin Tendulkar has his surname registered as a trademark in India. Apart from that, there were quite a few “Khannas” and “Swamys” registered as well. I wonder how the applicants of these marks found a way around the law.

What the law says about surnames and trademarks:

The Trademarks and Merchandise Act of 1958 (old act) did state that a mark may be refused if it is a surname or a personal name etc. However, the Act of 1999 does not specifically state that surnames may be refused. Also, while the Trademarks Act does not specifically mention in the definition of the mark that the word name would include surname or personal name, there is a general assumption on part of the public that surnames can be registered as a trademark. Although there is no bar by the law as such, coming to think of it, a surname is not a very good trademark as you cannot claim monopoly over something that is common to many others. Surnames are like generic trademarks which when granted are with disclaimers or not granted at all. You do have a right to use it as part of your trade but what is the point when you cannot stop someone else from using it? On that note, it is also pertinent to state here that if your mark has acquired distinctiveness over a period of time before the date of application and the same can be shown by way of documentary proof, then the Registry might be inclined to grant your mark registration.

What the courts say about surnames and trademarks:

The Courts have generally held that where the word has a better known meaning, other than as a surname it may be regarded as a non-ordinary one for being accepted for registration as a trade mark. A surname is of “ordinary significance” when the word has no other significance except that of a surname, however rare or unique the surname may be.

So if you have a surname that also has other meanings attached to it, then your chances of getting it registered are higher. For example, your surname is “Gill”, “Cannon” or “Swallow” (yes, people do have these surnames) then it has a meaning that is attached to it apart from just being a surname. The primary reason as to why surnames cannot be registered as trademarks is that it is not capable of distinguishing the goods of one person from another person’s bearing the same surname as trademark. Having said that, if you can show proof of distinctiveness of the mark, then it might get registered.

So basically there are two practices regarding surnames that are followed in India, which are;

  1. Where the word propounded for registration has no signification other than being a surname, then it may not be registered unless proof of distinctiveness is shown;
  2. Where the word propounded for registration has a “better known” meaning attached to it, then it is regarded as a non-ordinary one, then registration may be granted even if there is no proof of distinctiveness shown.

Either way, registering a surname might not be a good idea if you are looking to have exclusivity and all that that a registered owner of a trademark has.

This article has been authored by Durga Bhatt, an IP Law practitioner.