Karnataka High Court while disposing the appeal filed by Somashekar P. Patil (Plaintiff) against the order of Additional City Civil Judge, Bengaluru vide order dated May 08, 2018 held that a registered trade mark proprietor is not entitled to interfere with bona fide use of a person of his own name or that of his place of business.
A civil suit was filed against D.V.G. Patil (Defendant) for infringement and passing off of the trademark and trading name PATIL and PATIL PARIMALA WORKS. The Defendant was using identical and deceptively similar trading name PATIL FRAGRANCES. Initially, the temporary injunction was granted and upon an application to vacate the interim order, the trial Judge vacated the interim order which was challenged before the High Court.
The Plaintiff argued that the respondent’s using of the name PATIL FRAGRANCES is an infringement of its registered trade name PATIL and PATIL PARIMALA WORKS. The main argument of the defendant was that the Defendant's name is Doddanna Veeranagouda Patil and prior to 2015 defendant was working as General Manager with the Plaintiff’s business. It was also argued that both the appellant and respondent are brothers and the family members of both plaintiff and defendant use surname ' PATIL' predominantly.
The High Court observed that it is the fundamental right of any citizen to carry out trade, business, etc. under Article 19(1)(g) of the Constitution of India but this fundamental right is subject to reasonable restrictions and also various statutes of State and Central. Section 35 of the Trademark Act provides that a registered user or a registered trademark proprietor cannot interfere with the bona fide use of a person of his own name or that of his place of business. The Court held that the defendant has used the surname Patil as bona fide user on the basis of his family name, which is commonly used in the area where the family came from. It was held that just because the surname of the appellant is 'Patil', that itself is not a ground to injunct the defendant from using the word 'Patil' in his trademark. The Court held that it is a fundamental right of the person to use the surname which has been in use since ages.
Before the Trial court, the Plaintiff and Defendant filed several invoices for sale of their goods and except for the common name 'Patil' both the plaintiff and the defendant have used different brands. The plaintiff’s trademark was ‘Ullas’ and the defendant's brand was ‘Hitushree5’. Only the surname 'Patil' has been used by both the plaintiff as well as the defendant. The Court accepted the argument of the Defendant that he hails from Patil family and plaintiff happens to be the relative and also in the family circle the family members, who are in occupation of various business in their walks of life, invariably use their surname 'Patil' in their respective businesses. The court considered the fundamental right guaranteed by the Constitution of India to carry on the business with reasonable restrictions and it was held that Section 35 of the Trade Marks Act enables the Defendant to make use of the word 'Patil' which is bona fide use. Based on the above reasoning, the appeal was dismissed and the court upheld the judgment vacating the injunction order against the Defendant.