Supreme Court considers use of own family name as trademark

In Precious Jewels v Varun Gems (Civil Appeal No 7191/2014, August 4 2014), the Supreme Court of India has examined the permissible scope of use of one's own name as a trademark under Section 35 of the Trademarks Act 1999. The dispute concerned the use by the parties of their common family name, Rakyan, as a trade name. The case was originally brought by Varun Gems, trading as Rakyan’s Fine Jewellery, against Precious Jewels, trading as Neena and Ravi Rakyan.    

The facts of the case were as follows:

• The partners of Varun Gems and Precious Jewels belonged to the same family and both parties had a jewellery business, which was also their family business.
• Varun Gems claimed to have been running its jewellery business since August 2000 under the trade name Rakyan’s Fine Jewellery, for which it had obtained a trademark registration (No 1338163, dated February 14 2005) in Class 14 of the Nice Classification. Varun Gems also held a copyright registration (No A-74467/2005) for the artistic work in the trademark/label at issue.
• Precious Jewels alleged that it was doing business under the name Neena and Ravi Rakyan, claiming prior use of the trademark/trade name RAKYAN since 1986.
• Both parties were doing business in Delhi and their shops were next to each other. 
• On the basis of its registration and use of the trademark RAKYAN, Varun Gems filed suit before the Delhi High Court requesting, among other things, that Precious Jewels be restrained from doing business under the name Neena and Ravi Rakyan. The court granted an ex parte ad interim injunction restraining Precious Jewels from using the name Rakyan.
• Precious Jewels filed an appeal before the two-judge bench of the Delhi High Court. The appeal was dismissed on the ground that Precious Jewels had not been able to establish the continuous and prior use of the mark on a commercial scale since 1986, as alleged, and that use of the name Rakyan by Precious Jewels was causing confusion and deception.
• Precious Jewels approached the Supreme Court by way of a special leave petition challenging the High Court’s interim order.

Precious Jewels contended as follows:

• As the partners in the firm Neena and Ravi Rakyan were Smt Neena Rakyan and Shri Ravi Rakyan, they could not be restrained from doing business in their own name.
• The interim order restricting them from doing business was "unjust and improper".
• Section 35 of the act allows anyone to do business in his/her own name in a good-faith manner.

Varun Gems argued as follows: 

• Precious Jewels had no right to open a shop next to their own shop and to use the name Rakyan as the name of the shop.
• Precious Jewels had intentionally and fraudulently changed the name of its shop from Diamez to Neena and Ravi Rakyan to cause confusion and deception, and to benefit from the goodwill and reputation garnered by Varun Gems in the name Rakyan.

The Supreme Court ruled as follows:

• Section 35 of the act allows anyone to do business in his/her own name in a good-faith manner. In the present case, it was not disputed that the partners of Precious Jewels were doing business in their own name and in good faith.
• It was also not disputed that the partners of Varun Gems and Precious Jewels were related to each other and that practically all the family members were in the jewellery business.
• There were no similarities between the parties' shop fronts.
• Based on the provisions of Section 35 of the act, there was no prima facie case in favour of Varun Gems and, therefore, Precious Jewels could not be restrained from carrying out its business. Accordingly, the interim injunction in favour of Varun Gems was set aside and the appeal was allowed.

It is common in India for businesses to use family names as trademarks (eg, TATA, GODREJ, MAHINDRA and BAJAJ). The courts have generally prevented third parties from using their name, even if it was their own family name, on the ground that there was already another trader in the market which had goodwill in that name. The decision in the present case thus departed from established practice.  

Daleep Kumar, RNA Intellectual Property Attorneys, Gurgaon