It is commonly thought that the use of somebody else’s registered trademark as one’s business name or part thereof is fair game and does not violate any laws. However, The Trademarks Act, 1999 explicitly specifies in Section 29(5) that infringement of a mark occurs even if a registered trademark is used as a part of another’s trade name or name of a business concern. Certain recent case laws decided by various High Courts have confirmed and reinforced the abovementioned principle that in case the adoption of a mark can be established to be dishonest, the Defendant may be restricted from using the mark even as a part of its Business Name.
Lavasa Corporation Limited V. Lavasa Visuals Private Limited
In a recent judgment delivered by the Honorable High Court in Lavasa Corporation Limited (LCL) V. Lavasa Visuals Private Limited (“LVPL”), LCL successfully obtained a permanent injunction against LVPL in the use of the mark ‘Lavasa’ as part of its business/corporate name.
Lavasa Corporation Limited, a company engaged in the development, construction and management of a private hill city in India was represented by R. K. Dewan & Co.
By way of an order dated 19th September, 2013, LVPL was restrained from using the mark ‘Lavasa’ which is a coined word, as a part of its corporate name and was given time of 4 weeks to amend its business name. The Court took into consideration the inability of LVPL to prove honest adoption of the mark ‘Lavasa’ and granted permanent injunction against LVPL. This decision marks a turning point in the time taken to dispose of an IPR suit as the Hon’ble Court commendably disposed off this case within 6 months from the date on which it was filed and a final decree was passed in the matter.
The Timken Company Vs. Timken Services Private Limited case, decided by the Delhi High Court on 30th May, 2013 held that the adoption of the Plaintiff's trade mark 'Timken', and that of the Plaintiff's copyright in the style, font and orange colour used in depicting its trade mark by the Defendant was not honest. The Court was of the opinion that the Defendant must have been aware of the Plaintiff's trade mark, goodwill and reputation in the mark when it chose to adopt it as no other business entity was using 'Timken' in the capacity of a trade mark/name in relation to its goods or services or as a business/corporate name anywhere in the world at that time.
The Court also held that ‘Mere concurrent user is not sufficient in law; the adoption of the mark must be honest’. The Plaintiff successfully established the infringement of its trademark & copyright and was thereby granted injunction against the Defendant’s use of the mark as a part of its business name.
KSB Properties Private Limited Vs. KSB Aktiengesellschaft & Another, decided by the High Court of Calcutta on the 5th of December, 2012
This was an appeal arising out of an order passed by the District Court of Alipore. KSB Aktiengesellschaft coined the trademark/trade name 'KSB' in the year 1887 and since then was operating under that name. It had formed many companies all over the world using the letters 'KSB' as part of its business name. KSB Properties Private Limited started using the letters ‘KSB’ for its Real Estate business from the year 1995. KSB Aktiengesellschaft filed a case of infringement and successfully obtained temporary injunction against KSB Properties. The High Court considered the District Court’s judgment apt on the following grounds:
- KSB Aktiengesellschaft has been operating for the last 130 years with the coined trade name/mark 'KSB', and
- The trade name/mark 'KSB' is, registered in India in favour of KSB Aktiengesellschaft in respect of various goods and/or services falling under various classes.
Thus, the High Court opined that the Trial Court did not err in law, the facts and the circumstances in passing the order of temporary injunction.
From the above case laws, it can be concluded that registration of a mark bestows a layer of protection upon a mark that can save its proprietor from dilution of its mark that may be caused by the use of its trademark by others as a part of their business name in a related sphere of activity. Basically, one cannot use somebody else’s registered trademark as part of one’s business name.