Family businesses in India love trading under a surname — until relatives fall out over who owns it. There’s no clear law on surname trademarks, but the Delhi High Court’s Rathi case gives useful guidance on the Section 35 “own name” defence.
Why surnames cause fights
Indian businesses have long adopted a surname/family name so customers associate it with the business. But with so many businesses, registering a surname as a brand has become fraught — leading to confusion, deception and court battles between parties over a single surname.
The RATHI dispute
There’s no clear law on registering surnames as trademarks, but Anil Rathi v. Shri Sharma Steeltech offers a fair guide.
Both plaintiff and defendants made steel products under “RATHI” — the family name. The plaintiff is a trustee of the foundation running the business; the defendants are family members. An MoU and trust deed govern use of the RATHI mark. One defendant, breaching those, began licensing RATHI to third parties — though the plaintiff (the foundation) is the registered proprietor and, it argued, the only entity entitled to license the mark.
The Section 35 defence
- Plaintiff relied on Section 28 — as registered proprietor, it has the exclusive right to use RATHI and to sue for infringement.
- Defendant invoked Section 35 — bona fide use of one’s own name. Section 35, in brief, says a registered proprietor can’t interfere with a person’s bona fide use of his own name or place of business.
The ruling
The court held the defendant couldn’t shelter under Section 35, because that section is restricted to personal use of a registered mark — it doesn’t cover licensing or use by third parties. The defendant’s act also breached the MoU/Trust Deed. So the defendant’s use was not bona fide, granting licences in the same industry as the plaintiff.
More clarity needed
The decision usefully interprets Section 35 — but there’s still little substantive law on surname-as-trademark disputes. Where the mark is a surname/family name, courts should dig into Section 35’s two pillars: the bona fides requirement and the likelihood of confusion — both handled well here. More clarity would help.
The takeaways
- Section 35 protects personal bona fide use of your own name — not licensing the family mark to others.
- A registered proprietor’s rights (Section 28) prevail over a relative’s overreach.
- Bona fides matter — licensing in the same industry, breaching family agreements, isn’t bona fide.
- Formalise family-mark arrangements — MoUs/trust deeds shape who can use and license the name.
Frequently asked questions
Can a surname be registered as a trademark in India? There’s no clear statutory bar, but surname marks often cause confusion disputes; registrability and enforcement turn on distinctiveness and the facts, as the Rathi case shows.
What is the Section 35 “own name” defence? Section 35 stops a registered proprietor from interfering with a person’s bona fide use of their own name or place of business — but only for personal use, not licensing to third parties.
Did the defendant’s Section 35 defence succeed in the Rathi case? No — the court held Section 35 covers personal bona fide use, not licensing the mark to third parties, and the defendant’s use breached the family MoU/trust deed.
How can families protect a shared surname mark? By formalising ownership and use through agreements (MoUs, trust deeds) and clarifying who is the registered proprietor entitled to license it.
Legislation referred to
- The Trade Marks Act, 1999