When a person is not entitled to use family name of his wife as trademark of his business?

  The main contention advanced by the learned counsel for

the appellant is that 'Panikkassery' being the family name of the wife of

the defendant, the use of the said name by the defendant will not

amount to infringement. Section 35 of the Trade Marks Act relied on by

the defendant in support of his contention reads thus :

                     "Section 35. Saving for use of name, address or description of

              goods or services--Nothing in this Act shall entitle the proprietor or a

              registered user of a registered trade mark to interfere with any bona fide

              use by a person of his own name or that of his place of business, or of the

              name, or of the name of the place of business, of any of his predecessors

              in business, or the use by any person of any bona fide description of the

              character or quality of his goods or services."

Section 35 protects bona fide use by a person of his own name or that of

his place of business, or of the name, or of the name of the place of

business, of any of his predecessors in business. It is evident from

Section 35 that the said Section permits only bona fide use of the name

referred to in the Section. Bona fide use means honest use by a person

without any intention to deceive anybody or without any intention to

make use the good will of another. In the instant case, 'Panikkassery' is

the family name of the wife of the defendant. The said name is not a

name contemplated under Section 35 of the Trade Marks Act and at any

rate, the said name being the family name of the wife of the defendant, it

is difficult to hold that the use of the said name by the defendant is bona

fide and without any intention to make use the good will of the plaintiff.

The defendant is, therefore, not entitled to the protection under Section

35 of the Trade Marks Act.

IN THE HIGH COURT OF KERALA AT ERNAKULAM

                                                      PRESENT:

     THE HONOURABLE MR. JUSTICE P.B.SURESH KUMAR

             THURSDAY, THE 19TH DAY OF MARCH 2015

                          FAO.No. 292 of 2014 

            SHOUKKATH.J, 

Vs

            M.MUHAMMED NOUSHAD,

           

Citation;AIR 2016(NOC)134 Kerala

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Whether unauthorized use of famous person's name is bonafide use?

In the judgment delivered in Case No.D2009-1247 (Ms.Barkha Dutt Vs. Easyticket], it has been held by the Work Intellectual Property Organizations (WIPO), the international agency governing internet domains, that an unauthorized use of a famous person's name is not a bonafide use and if such name is used to lure users, it does not confer rights or legitimate interests on the infringer and it has been further held that the right to commercially use or exploit one's own name, vests with the person who has worked to create the fame and can lawfully restrict any other third party from exploiting that fame for commercial purposes.

From the reading of the above said judgments, it is seen that if any person uses the name of a celebrity without his/her permission, the celebrity is entitled for injunction, if the said celebrity could be easily identified by the use of his name by the others. As observed earlier, in the instant case, on seeing the name of Rajinikanth in the tile of the impugned movie, the persons, who are coming across the tile of the impugned movie, are identifying the name only with the plaintiff herein, which is evident from the website pages hosted by different persons. Therefore, in my opinion, even assuming for a moment that the impugned movie is not a biopic of the plaintiff, since the name found in the title of the impugned movie is identifiable only with the plaintiff, who happens to be a celebrity and not with any other person, the defendant is not entitled to use the said name without the permission of the plaintiff/celebrity, particularly when he had chosen to advertise the movie with a title 'Hot Kavita Radheshyam As Sex Worker For Rajinikanth'.

Madras High Court

Mr.Shivaji Rao Gaikwad vs M/S.Varsha Productions on 3 February, 2015

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