Understanding Family Trademarks

21st August, 2023 - 7:51 am Categories: Trademark 0 Comments

Introduction

Trademarks serve to safeguard the distinctive characteristics that distinguish the origin of products under the ownership of a particular entity. This legal privilege is typically granted to those who have obtained registration or have been using such marks for a long period of time. Nonetheless, the subject at hand challenges this notion. Numerous well-known legal cases exemplify the characteristics and significance of these trademarks, as well as the rights that stem from their use or formal registration.

This issue pertains to the protection and use of a mark;however, the jurisdiction does not lie with the Trademark Act 1999. As the name might suggest,‘family trademarks’, fall under the purview of Family laws and are considered an asset that is passed on through generations.

Jurisprudence Behind

The jurisprudence behind this is – if tangible properties are divided so why shouldn’t the intangible ones too?

But before we delve in, we should answer the primary questions such as ‘Who all are considered as a family?’ to this the court has stated that the term family should be considered in a wider sense so as to include not only close relations or legal heirs but even those persons who may have some sort of antecedent title, a resemblance of a claim as per Kale & Ors. v. Deputy Director of Consolidation and Others[1].

It will be unfair to give a sole proprietorship to a mark that has been used in family trade oruse has been between families, then in that case the trademark in such association gets divided between their heirs. However, for the specific divide of goodwill, one might want to prior indulge in the same, as there are high amounts of goodwill and reputation associated with marks associated with the family. However, if, prior arrangements are settled in any manner before the death of the proprietor, such needs are to be respected as has been laid in Rajni Dua & Ors vs Bhusan Kumar & Ors.[2], where such arrangements were considered which were made by late Mr. Gulshan Kumar reiterated through his handwritten notes and such arrangements were given a concrete shape in form of family arrangements.

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In case such arrangements have not been made, then parallel rights and protection of each heir are to be considered as was laid in Darshan Lal Dhooper vs. Motia Rani & Ors.[3] In this case, the deed was dissolved stating that neither the petitioner nor the respondent Nos. 1 to 3 individually were to claim ownership over the mark ‘Plaza’, therefore, it was settled that such registrations were to take place jointly with the petitioner as well as the respondent Nos. 1 to 3, thus developing such stance from the doctrine of shared goodwill and common family legacy.

This very doctrine gave rise to the idea of disassociating family trademark disputes from the realm of trademarks. This can be traced from the case of Narasus’s Coffee Company Vs Narasu’s Roller Flour Mill[4] where the jurisdiction of such disputes were declared by the court in respect to family trademarks.

However, protection under family trademarks crumbles the moment rivalry or competition is proved between the two proprietors in association with the use of such trademarks. This was laid down in the case of M/s Power Control Appliance & Ors. v. Sumeet Machines Pvt. Ltd.[5]where the court observed,

“41. It is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins. Where, therefore, the first defendant-respondent has proclaimed himself as a rival of the plaintiffs and as joint owner it is impermissible in law. Even then. the joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other.”

FAMOUS CASE LAWS

1. In the famous case of Sri Krishna Sweets Private Limited Vs. M. Murali[6] the plaintiff sought injunction of the defendant who was the brother, from using the mark ‘KRISHNA’ along with or without any appendages such as ‘SHRI’ or ‘SWEETS’-such a claim was resisted on the ground that their father had started a business in the name of ‘SHRI KRISHNA SWEETS’ in the year 1948 and such tradename belonged to their father and deserves to inherited by his two sons.it was also traced from various documents as well as the contents of the Website of both the plaintiff as well as thedefendant, it is seen that both the parties have traced their linage in the business to MahadevaIyer and he has been celebrated as the founder of ‘Mysore Pa’. Therefore, such injunction claims were refused consequently. This was considered an unfortunate case of sibling rivalry.
2. In the case of SRF Foundation v Shri Ram Education Trust[7], the Plaintiff asserted exclusive rights to the ‘SHRI RAM’ mark, contending that it was initially utilized in 1988. He identified himself as a legal heir of the renowned Sir Shri Ram. However, during the trial, it emerged that the mark had its origins with their mutual ancestor, who employed it for prestigious educational institutions like Lady Shri Ram College and Shri Ram College of Commerce. Due to their shared family background, both sides possessed an equal entitlement to employ the family-associated trademarks. In light of the doctrine of shared goodwill and common family legacy, the Delhi High Court ruled that since both litigants were connected by lineage, they held mutual rights to the trademark. As a result, one party could not prohibit the other from its usage.
3. Parle Products v. Parle Agro[8] dealt with a situation where both parties came from the same family business operating under the brand name “Parle.” The ancestors of both the Plaintiff and the Defendant were involved in manufacturing biscuits and beverages. Both parties had the right to use the common trademark “PARLE” alongside their own specific product marks. Initially, they divided their operations, with one focusing on biscuits and the other on beverages. Later, they both independently ventured into their respective areas, while remaining in the food and beverage industry. Plaintiff concentrated on biscuits, while Defendant turned to beverages.

However, in 2007 a dispute arose when Defendant expanded its business to include biscuits, which was objected to by Plaintiff. The central issue was whether Defendant could use the “Parle” trademark along with its new biscuit products in a way that might confuse consumers about the origin of the products.

The court stated and concluded that there was no formal agreement between the parties that prevented them from entering each other’s business areas. The court also recognized that former partners or employees who establish competing businesses have the right to acknowledge their previous association, as long as it’s clear that the connection is historical and not ongoing. However, the court required Parle Agro to make it clear that its products were distinct from those of Parle Products.

Conclusion

The cases reflect the jurisprudence and the line of thought maintained by the courts in India. These cases are very critically analysed due to their sensitivity. However, in regard to the doctrine of shared goodwill and common family legacy, courts have successfully portrayed a trend in resolving disputes involving family trademarks.

Author: Soumi Lahiri, A Student at University of Petroleum and Energy Studies, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

[1] Kale &Ors. v. Deputy Director of Consolidation and Others 1976 AIR 807

[2]RajniDua&Ors vs Bhusan Kumar & Ors.77 (1999) DLT 392

[3]Darshan Lal Dhooper vs. MotiaRani &Ors. 99 (2002) DLT 792

[4]Narasus’s Coffee Company Vs Narasu’s Roller Floru MillO.S.A.Nos.234 to 237 of 2008

[5] M/s Power Control Appliance &Ors. v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448

[6] Sri Krishna Sweets Private Limited Vs. M. Murali(2017) 8 Mad LJ 588

[7] SRF Foundation v Shri Ram Education Trust (2016)182PLR3

[8]Parle Products Private Limited Vs Parle Agro Private Limited 2021 SCC OnLineBom 5274