Introduction
A trademark is an identifiable sign, word, name, image or any mix of these, which denotes a specific product, and legally differentiates it from other similar products. It can also be used to recognize a producer or dealer from the merchandise fabricated or sold by them.
A trademark can be described as a tool of intellectual property, which protects words and design elements that identify the source, owner, or developer of a product or service. It prevents confusion, and also safeguards against unauthorised misappropriation of products while protecting the goodwill of a business.
What is a Family Trademark?
The phrase ‘Family trademark’ refers to the trademarks used by a person for their family business, wherein the trademark ownership lies with each member of the family. This gives concurrent rights to the family members and protects each heir under the doctrine of shared goodwill and common family legacy.
Family trademarks are considered important because each continuing trademark reinforces the root brand. It also has increasingly prompt acknowledgement and uniqueness.
Family trademarks are, thus, a gathering of trademarks, meaning,
Disputes Related to Family Trademark
Generally, disputes in case of family trademarks arise when the business splits up. It often results in disputes regarding trademark ownership and its infringement. Under the Trademarks Act, 1999, there is no specific provision in order to deal with such a dispute. Hence, the Courts in India at various instances have clarified the rules regarding family trademarks.
In the case of Shri Ram Education Trust v. SRF Foundation (2016), the High Court of Delhi observed that no one member of a family can claim exclusive ownership over a family trademark. All the heirs of the first owner of the trademark, who earned all the goodwill and reputation, shall have equal rights to adopt and use the said trademark. It does not matter if one heir adopted it prior to other heirs.
A similar situation arose in the case of Sri Krishna Sweets Pvt. Ltd. v. Mr M. Murali (2017), wherein two brothers claimed rights to use the ‘SRI KRISHNA SWEETS’ trademark after inheritance from their father. The Plaintiff argued that the business was started by him and the lower Court was not right in concluding that the name was a part of a common inheritance from the father and both the sons have equal rights over the trademark. However, the Madras High Court did not interfere with the decision of the lower Court and made it clear that trademark disputes between family members should not be treated as trademark disputes, but must be looked at as a family dispute.
Furthermore, in the case of Power Control Appliance & Ors. v. Sumeet Machines Pvt. Ltd. (1994), the Supreme Court observed that a trademark can only have one mark, one source and one owner. A trademark inherited by two or more heirs cannot be used in rivalry or competition against each other but has to be used jointly, even if the family members split into different routes.
What Constitutes a "Family"?
The Supreme Court, in the case of Kale & Others v. Deputy Director of Consolidation and Others (1976), observed that the term "family" has to be seen in a wider scope, so as to include not only close relations and legal heirs but also persons who may have some sort of antecedent title in the business.
Furthermore, it has been opined by all courts that any dispute arising out of inherited family trademark must be seen as a family dispute rather than a trademark dispute.
Conclusion
Looking at the approach taken by various courts in such disputes, it is safe to say that it is not possible to claim sole proprietorship over family trademarks. However, there are few ways to use family trademarks with other family members without facing any legal dispute.
The simplest way to do so it so co-exists, or sign a non-compete agreement, under which all the family members can use the family trademark simultaneously, for different specifications of goods/services, in order to avoid any conflict.
However, in order to claim exclusive right over a family trademark, an heir has to establish that he is the prior and continuous use of such a trademark. Additionally, he has to establish that the mark by extensive use is only associated with him and no one else.
