ABSTRACT
In the field of Intellectual Property Rights, Trade Mark and Trade Name are the two most important concepts. Both share some similarities as well as some major differences. The Trade Name is known by different names in different nations. The rules relating to Trade Name protection also depend upon a state-to-state basis. This paper deals with the concept of Trade Name, what it actually means, legal protection provided to Trade Names, the difference between Trade Mark and Trade Name, and various landmark case laws relating to the same.
INTRODUCTION
A Trade Name can be defined as a name through which a business is known by the public at large. It is the name which is used for advertising and marketing of the business. It is also known as DBA i.e. Doing Business As, assumed name, fictitious name, etc. If any company wants to conduct business under a certain name, other than the legal name, it can do so after registering that name as its Trade Name. However, it is not mandatory for a company to use the Trade Name. For example – Walmart is a well-known business company. Its legal name is Wal-Mart Inc. and by this name only, all the paperwork which involves the government is done. However, the tradename of Wal-Mart Inc. is just “Walmart” and the same is used for its advertising and marketing. People also generally know it from its Trade Name only.
LEGAL PROTECTION
According to WIPO, if a Trade Name is distinctive then its use is protected. In this case, it does not matter whether the Trade Name is registered or not. The word distinctive here refers that the public associates that particular Trade Name with reference to a certain trade source. If the Trade Name is not distinctive, it can acquire protection after it achieves or gains distinctiveness.
TRADE NAME V. TRADE MARK
Many a time, people use ‘Trade Name’ and ‘Trade Mark’ interchangeably. However, there is a huge difference between the two. A Trade Name is a name which is used for advertising and marketing purposes. On the other hand, a Trade Mark can be defined as a mark which can be graphically represented and distinguishes the product and services of a person from that of others. It may consist of a word, logo, design, phrase, slogan, symbol, etc. A Trade Name does not have any brand name protection or it does not provide a company with unlimited rights for the use of that name. However, in order to provide protection to the Trade Name, registering the same is important. On the other hand, the Trade Mark has protection from unauthorised use. However, in certain cases, for a company, the Trade Name often becomes its Trade Mark. Take for example – “Google” is a Trade Name as well as the Trade Mark.
CASE LAWS
The Delhi HC decided this case in 1981. The plaintiff, in this case, was indulged in a business of dealing in and selling sarees. This was done by him under the Trade Name “Kala Niketan”. Plaintiff used various modes like newspapers, radio, boarding, and other media to give wide publicity to its Trade Name. As a result, there was a huge market for the sarees of the plaintiff. The defendant, in this case, was well aware of the Trade Name of the plaintiff. He also started a business of sarees and started using the same Trade Name. This created a lot of confusion in the minds of the customers and also caused losses to the plaintiff. In December 1977, a notice was served to the defendant instructing him to stop the use of the Trade Name ‘Kala Niketan’. Even after this, the defendant continued to do so. Contrary to the notice, the defendant, in 1978, published a caution notice in the newspaper in which he claimed his own firm to be the proprietor of the disputed Trade Name. The Court observed that the defendant used the Trade Name “Kala Niketan” to use the fame of the Plaintiff’s Trade Name with mala fide intention to gain profit. The court stated that this act is not permissible and therefore, granted a decree for a permanent injunction.
Atlas Cycle (Haryana) Limited, plaintiff, in this case, filed a suit against defendants for permanent injunction in order to restrain them from using the Trade Mark ‘Atlas’. The plaintiff did registration of this trademark. The defendant was using the Trade Mark ‘House of Atlas’ for selling his bicycles. In this trademark, the word ‘Atlas’ was used in an eye-catching manner i.e. everyone could easily notice it. However, the words “House of” were shown in a very small font size. Due to this difference of depiction, the word ‘Atlas’ was gaining dominant exposure. The Delhi High Court held that the use of the trademark by the defendant is done for the sake of confusing the public. So, the verdict was given against the defendant. The point to be noted was that the court did not restrain the defendant from using the said Trade Name. The court said that there is a fault on the part of Plaintiff because he had raised the matter after seven years of incorporation of the defendant’s company. At this point, if the Court will restrain the defendant from using its corporate name which he has raised for the last seven years and grant injunction against him, this would be unfair to him.
The plaintiff, in this case, was Laxmanrao Kashinath Kirloskar. In 1888, he founded the ‘Kirloskar’ Group of Companies and started the business of bicycle repairing along with his brother. Time passed and their business expanded. Numerous companies started working under them. The word ‘Kirloskar’ was adopted as a trademark and Trade Name and was extensively used by various companies of Kirloskar Group. The defendants wanted to take advantage of the reputation of the plaintiff’s company. The Pune District Court passed an interim injunction restraining the defendants from using the word “Kirloskar” as a part of their corporate name. The defendants filed an appeal in the Bombay High Court. The Bombay High Court held that a company cannot use the Trade Name of another company which is well reputed and has acquired goodwill. Therefore, the appeal was rejected.
CONCLUSION
Often misunderstood as a Trade Mark, the Trade Name is a significant concept in the arena of Intellectual Property Rights. The public knows a business generally by its Trade Name. Unauthorised use of a reputed Trade Name cannot be done. However, it is true that Trade Name laws are not as stringent and well established as they should be. However, the interpretations and judgements of the judiciary in various Trade Name laws helped to improve the condition and bring clarity about the concept.
AUTHOR
Priya Kumari
Maharashtra National Law University, Aurangabad