Family Trademark

Date : May 27, 2020

INTRODUCTION

Intellectual Property is the most significant piece of advanced business. IP makes a sound challenge in the market; thus the producer and brokers build up their items all the more adequately. One such Intellectual property is Trademark. A trademark incorporates any word, name, image, or any mix, used , or expected to be used, in business to recognize and recognize the products of one producer or dealer from merchandise fabricated or sold by others and to show the wellspring of the products. So, a trademark is a brand name. Trademark is an imprint or image which is fit for recognizing the products or administrations of one from those of others. The proprietor of the Mark can forestall the utilization of comparable or indistinguishable marks by contenders if such checks can prompt perplexity. By this, comparative low-quality substitutes will be kept from supplanting great quality ones.

Trademark not only prevents business from unfair competition in market but also helps in protection of the goodwill which the business has created and developed with its products and services over a period of time. Trademark continues with the business even after the life of owner of trademark. Such Trademarks gets inherited to the family of the owner of trademark.

FAMILY TRADEMARK

Family trademarks are marks that are utilized by an individual for his family businesses, where the trademark possession lies with every individual from the family. Many trademark suits which are documented concerning family trademarks are generally sibling rivalries who want to cash upon the goodwill the trade name which has acquired through years of hard work of their ancestors.

Family trademarks are a gathering of trademarks that:

  • has common characteristics recognized by all,
  • that is distinctive and differentiating, and
  • that is utilized with the goal that the purchasing public perceives the regular trademark to demonstrate that the trademark proprietor is the basic root of the merchandise or administrations.

There are a couple of reasons to build up Family trademarks.

  • each progressive trademark reinforces the first or root brand.
  • each progressive trademark has increasingly prompt acknowledgment and uniqueness. The devouring open will all the more rapidly partner the products with the first brand and the group of trademarks.

Family Trademarks are about reinforcing a specific brand than making an approximately related gathering of trademarks. They can be an incredible method to reinforce and grow a brand if the proprietor gets them and their utilization.

DISPUTE RELATING TO FAMILY TRADEMARK

A dispute arises when an inherited Trademark gets divided between two or more family members who are separated. Each member claims to be the lawful owner of the trademark and hence a conflict arises to the use of trademark by such family members. The basic purpose of Trademark is to prevent the business from its competitors and prevent the uniqueness of goods and services provided. In such situation the question arises whether such distribution of inherited trademark among various Members of family will dilute the value of such inherited family trademark.

The courts in various cases have taken a view that all the family members of the owner of trademark possess lawful right to use the inherited trademark and no single heir or family member has an exclusive right to use such inherited trademark unless any contrary appears.[1]Such a view has been taken as there is no malafide intention of the any family member or heir to harm or to affect the business under the inherited trademark of family nor to deceive the people by using such an inherited family trademark.[2] All the heirs are the lawful owners of the trademark and no such right for trademark can be claimed by any of the family member against the other.[3] The apex court further held that the peace and tranquility of family in such cases must be maintained and family arrangement should not be disturbed as far as possible. The peace, amity and family harmony can be restored if the family arrangement is adhered to and respected.[4]

 WHAT CONSTITUTES “FAMILY”

The next question arises in such situation is what constitutes a family in the cases of inherited family trademark who are entitled and are lawful owner of such inherited family trademark. The court in the case of Kale & Ors. Vs. Deputy Director of Consolidation and Others held that the term “family” has to be understood in a wider sense so as to include within its fold not only close relations or legal heirs but even those persons who may have some sort of antecedent title, a semblance of a claim or even if they have a spes successions so that the future disputes are sealed forever and the family instead of fighting claims inter se and wasting time, money and energy on such fruitless or futile litigation is able to devote its attention to more constructive work in the larger interest of the society. Further, any dispute arising out of inherited family trademark must be seen as a family dispute rather than a Trademark dispute.

CONDITIONS WHEN TRADEMARK NOT GETS TRANSFERRED

Distribution of Inherited family trademark takes a different route where the family members are rivals of each other, in such cases joint ownership is impermissible and injunction should be granted.[5]The court held that the joint proprietors must use the trademark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other.[6]

CONCLUSION

Hence, in situations regarding distribution of trademark between family members, such trademark is open to use for all the family members but such trademark must not be used as a competition against each other and must be used with a bonafide intention to grab the each and every opportunity created by use of such Trademark.

Author: Akhil Goyal, student of  Chanakya National Law University, intern at IP and Legal Filings and can be reached at support@ipandlegalfilings.com

References:

[1]Narasus's Coffee Company Vs Narasu's Roller Floru Mill

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

[3]Sri Krishna Sweets Pvt. Ltd. vs Mr.M.Murali

[4]Rajni Dua & Ors. Vs. Bhushan Kumar & Ors., (1998) VI AD Delhi.

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

[6]M/s.Power Control Applianc & Ors. vs. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448