Call me by your name
I’m picking up where we left off last. What happens when an individual would like to assert their rights over their name but the name is fairly common and someone else also seeks to obtain protection over the same? Let’s consider this example: My full name — Sakshi Sharma. I believe it is the most ‘occurred’ name there is. Thanks for the lack of inventiveness, parents! But you look up ‘Sakshi Sharma’ and your search results would yield accounts/links in the thousands. There were multiple Sakshis just in my section in law school. Say I come across a Ted-Ex speaker with the same name as mine — Sakshi Sharma. But she is an influencer with a steady fan base and renown, whereas I am just starting out with my business venture. Now, both of us would like to use our names — people do tend to identify you and/or your achievements and business with it. Say she applies for a trademark for ‘Sakshi Sharma’, would I be able to contest it?
The answer to the question is yes and fortunately, I’ve not been the only one with the most non-inventive name there is nor have I been the only one to have posed the question of what happens when two people have the same name. The courts in both India and the USA have considered this question and I shall try to map their thinking now. Fair warning though, there could be quite a few but I shall try and stick to the popular ones.
You know of Gautam Gambhir today as the Member of Parliament from East Delhi, but before he ventured into politics, he was a very popular cricketer (and one who tried to claim exclusive rights over ‘Gautam Gambhir’). The story goes back to 2017, when he claimed that the proprietor of two pubs/restaurants named ‘Ghungroo’ and ‘Hawalat’ (both in Delhi), was trying to free-ride on his goodwill and gain commercial advantage by using his renown/fame. The pubs had a tagline ‘By Gautam Gambhir’ which was the cause of all confusion. But let’s stir the pot more! The catch here was that the proprietor of the places was also one Gautam Gambhir. Mr. Gambhir (the cricketer) did not have any trademark rights over the name but was actually exercising his publicity rights.
Publicity rights are primarily rights utilized by celebrities to protect their image, name, etc. and flow from the right of privacy which is a fundamental right available to all citizens. There is actually a two-pronged criterion, courtesy of our judiciary, that provides that right of publicity is infringed when — firstly, the plaintiff owns an enforceable right in the identity or persona of a human being and secondly, the celebrity is identifiable from unauthorized use.
In the case with Gautam Gambhir, however, the court sided with the restaurant owner as ‘he is entitled to carry on his business in his own name’ and he did make active efforts by using his own pictures on posters/photos and promotional material. There was no evidence to show that the restaurant owner was trying to utilize the acclaim of the cricketer Mr. Gautam Gambhir, by claiming association; there was nothing to show that the goodwill of the plaintiff in his field of cricket suffered loss because of the restaurant.
But this was still an instance where the full name of an individual was brought into question and that too one of a celebrity. What if it was just a surname? The odds of the surname being utilized by two people are obviously greater than when it is the full name of an individual. Don’t worry, the Indian courts (and I) have got you. The Trademarks Act, by virtue of Section 35 allows a person to use their own name or name of place of business or even names of predecessors in business, provided that such use is done in good faith and bonafide. This use shall have no effect on the rights of a registered trademark owner. This is why you can have multiple “Gupta & Sons” shops/outlets based in different areas/cities.
In the case of Dr. Reddy Labs Ltd. v. Reddy Pharmaceuticals Ltd. where the conflicting marks were ‘Dr. Reddy’s’ and ‘Reddy’ Pharmaceutical Limited, the defendant used to purchase bulk drugs from the plaintiff and then began manufacturing its own products using the mark ‘Reddy’. The court had found such use to not be bonafide (and thus not entitled to the protection under Section 35). Therefore, one cannot just encash on the goodwill of another individual with the same surname. An interesting case that I recall reading was that of Anjani Kumar Goenka v. Goenka Institute of Education, where the parties both ran education institutions with “Goenka” in its name. The Delhi High Court had, in this case, observed that application of Section 35 must be confined to the use of full names only and when done by a natural person. So in this case, the defendant was asked to amend their names to include the full name of the proprietor — Mohini Devi Goenka rather than just using Goenka. An obvious question that arises is what exactly would be bonafide use and this was dealt with in the case of Precious Jewels v. Varun Gems. The case concerned the use of the surname ‘Rakyan’ by two entities where it was held that ‘bonafide is applicable to the whole provision — in simple words, the use by another person must come from good faith and the use must be honest (that is to not free ride on the goodwill of another proprietor). The court while elaborating on this did allow the defendants to use ‘Rakyan’ provided it was as ‘Neena and Ravi Rakyan’ and not just Rakyan.
Litigation trends do indicate consistency in disputes concerning surnames with the case of Anil Rathi v. Shri Sharma Steeltech and the case of Singh & Singh v. Singh + Singh Lawyers LLP being two very recent cases where the registered proprietor’s rights were upheld. These cases while dealing with surnames, however, do not arise out of the individuals being related to one another but what if they were? What if I decide to use my surname — Sharma as a business name and so does my sibling? Would I have rights then because of “elder sister privileges”?
To the best of my knowledge, the Indian courts haven’t dealt with a case where the parties are actually blood relatives using the same name/surname, much less when one of them is a celebrity. But the beautiful, trend-setting Rihanna of “What’s my name” fame did actually sue her father for the name ‘Fenty’. The case was filed before the California Federal Court and claimed damages for misrepresentation & false advertising, invasion of rights of privacy and publicity in addition to trademark infringement (since Rihanna has trademark rights over Fenty). The funny thing though is that the name ‘Fenty’ was given to her by her father, Mr. Ronald Fenty and allegations were that he and his business partners claimed to represent Rihanna and hence solicit business. From the reports that I found, the case awaits a jury trial. But a similar scenario arose in the case of Paolo Gucci v. Gucci Shops, where the court ruled that Paolo could use Gucci provided he uses his full name, much like the Indian cases we have seen. It is likely that Rihanna’s case might sway the same way and that Ronald Fenty would have to make appropriate amends.
So, if you are using your name or surname — be sure to exercise caution, conduct due diligence, and remember — GOOD FAITH above all else.