This article is written by Vishwendra Prashant. It explains Section 35 of the Trademarks Act, 1999, the ingredients of this Section including its judicial interpretation by the courts and the difference between Sections 34 and 35 of the Act. Moreover, this article highlights the exceptions to the bona fide use under Section 35 with the most recent judgements. In this way, it covers all the important aspects of this Section.

Introduction

Intellectual properties (IP) consist of artistic, literary, technical, or scientific creations. These are the outcomes of human intelligence and creativity that results in tangible materials that can be owned and commercialised. Subsequently, intellectual property rights (IPR) are the rights granted to the creators or inventors in compliance with the statutes. The creators or inventors get such rights by revealing the process of creation or invention in the public domain. Moreover, such rights permit them to do the following:

• To use or sell the intellectual properties;
• To distribute the same;
• To offer for sale; and,
• To ban other individuals from using such properties without their consent.

Trademarks are one of the types of intellectual properties that come under industrial designs. They are signs, symbols, numbers, names, or designs that help customers identify and differentiate the goods and services of one company from those of others.

The globalisation of businesses has increased the significance and value of trademarks. The Trade-Related Aspects of Intellectual Property Rights, 1994 (hereinafter referred to as TRIPS) acknowledged the need for reliable security and enforcement mechanisms. Therefore, the Parliament enforced the Trademarks Act, 1999 in compliance with the TRIPS agreement.

The Act protects the rights of registered trademark owners by facilitating the remedies for the infringement of such trademarks. We will discuss the objectives of the Act in detail. Coming to the provisions of the Act, we will discuss Section 35 which justifies the declaration of trademark infringement. 

Section 35 of Trade Marks Ac t: Saving for use of name, address or description of goods or services

Essential Ingredients of Section 35

This Section postulates that no provisions in the Act authorise the owners or registered users of registered trademarks to interfere with any authentic uses by individuals of their own names or that of their sites of business, or the names of the sites of business, or the names of any of their predecessors in business, or the uses by any individuals of authentic descriptions of the characters or qualities of their goods or services.

Given below are the essential ingredients of Section 35:

1. There must be registered trademarks as per the Act;
2. There must be owners or registered users of these trademarks;
3. No provisions should authorise such owners or users the right to interfere with any bona fide uses of the trademarks:

1. By individuals of their own names; or
2. That of their places of business; or
3. The names of the places of business; or
4. The names of any of their predecessors in business; or
5. The uses by any individuals of authentic descriptions of the characters or qualities of their goods or services.

Judicial interpretation of Section 35 of Trade Marks Act, 1999

In Somashekar P. Patil vs. D.V.G. Patil (2018), the defendant used a trademark ‘PATIL FRAGRANCES’ similar to the plaintiff’s because they used the surname ‘PATIL’. The plaintiff filed a suit against the defendant as the latter infringed the former’s trademark. Moreover, the plaintiff filed two interlocutory applications for an interim injunction against the defendant. Initially, the trial court granted the interim injunction to prohibit the defendant from using the disputed trademark. After that, the defendant filed an interlocutory application to quash the interim order. The learned judge quashed the same.

The plaintiff filed an appeal before the Karnataka High Court. He (plaintiff/appellant) requested to revoke the judge’s order and dismiss the application filed by the defendant (respondent). The appellant contended that the respondent infringed his trademark by using the trademark and the business name ‘PATIL and PATIL PARIMALA WORKS’. The respondent argued that he was a member of the Patil family and the appellant was his relative. The Karnataka High Court accepted his argument.

The court observed that Section 35 of the Trademarks Act does not permit owners or users of registered trademarks to question other individuals’ authentic uses of their own names or the names of their business sites. The brands of the appellant and respondent were ‘Ullas’ and ‘Hitushree5’ respectively. The respondent authentically used the surname ‘Patil’ as per his well-known family identity.

The court deduced that the appellant has no authority to prevent the respondent from using ‘Patil’ in his trademark solely based on the respondent’s surname being ‘Patil’. Therefore, the respondent had the right to use a surname that had been in use for generations. His family members were using the same surname in their businesses. 

The Karnataka High Court considered the constitutional right granted by Article 19(1)(g) of the Constitution of India that authorises to engage in any businesses or trades. The court observed that this right adheres to reasonable limits imposed by central and State laws. The courts must be cautious before prohibiting individuals from exercising this right.

As per Section 35, the High Court ruled that the respondent has the legal right to use the word ‘Patil’. The court disregarded the appeal and supported the learned judge’s order.

In Precious Jewels & Anr. vs. Varun Gems (2014), the plaintiff and defendants, being from the same family, operated jewellery stores named ‘Rakyans Fine Jewellery’ and ‘Neena and Ravi Rakyan’ respectively. They shared the same surname ‘Rakyan’. However, the plaintiff sued against the defendants to prevent them from operating their jewellery store. He alleged that they used his surname ‘Rakyan’ in their trademark. 

The defendants (appellants) filed an appeal before the Supreme Court. They argued that they had the right to use their own names for their business as per Section 35 of the Act. The Supreme Court accepted the appeal and ruled that the appellants could continue using the ‘Rakyan’ surname as per the Section because they acted legitimately. The court allowed them to use their own names for their business.

In Jindal Industries Private Limited vs. Suncity Sheets Private Limited and Anr. (2024), there were two defendants (Defendants 1 & 2) named Suncity Sheets Pvt. Ltd. (SSPL) and Rachna Nitin Jindal respectively. Defendant 2 was Nitin Kumar Jindal’s wife (he was the Manager of SSPL). The plaintiff (Jindal Industries Pvt. Ltd.) filed an interlocutory application requesting an order of interim injunction. He declared that the defendants infringed his registered trademark “JINDAL” by using the trademark “RNJ RN JINDAL SS TUBES LABEL”. According to the defendants, they authentically used their surname “JINDAL” in their trademark as per Section 35 of the Trademarks Act. Moreover, “JINDAL” was a commonly used surname. If they used their own surnames as trademarks, such usage was inherently authentic.

The Delhi High Court rejected the plaintiff’s interlocutory application as he was not eligible for the interim injunction. The court explained that the defendants endeavoured to diminish potential confusion between the trademarks by using the initials “RNJ” before defendant 2’s ownership name “RN JINDAL STAINLESS STEEL”. The court’s verdict was that they authentically used ‘JINDAL’ and did not infringe the plaintiff’s registered trademark “JINDAL”. The defendants got the benefit of Section 35 as Defendant 2 had used the mark “RNJ RN JINDAL SS TUBES LABEL” in good faith.

In Goenka Institution of Education & Research vs. Anjani Kumar Goenka & Anr. (2009), the defendant was using ‘Goenka’ for his schools and trusts, some of which are given as follows:

1. Goenka Public School (used since 2000);
2. Mohini Devi Goenka Mahila Mahavidyalaya (used since 1995);
3. Shree Lal Goenka Charitable Trust (used since 1990);
4. Goenka College of Pharmacy;
5. Mohini Devi Goenka Girls B.Ed College;
6. Mohini Devi Goenka Girls Mahavidyalaya;
7. Goenka Girls School; and,
8. Goenka Shiksha Avam Sodh Sansthan.

The trustees of the trust i.e., (iii) were Shyam Sunder Goenka and Ashutosh Goenka. A society (managed by the trust) was operating (ii). Moreover, the plaintiffs had been operating “G.D. Goenka Public School” since 1994. They tried to prevent the defendant from operating their institutes by requesting an order of interlocutory injunction. The plaintiffs contended that ‘Goenka’ was the surname of their trustees and they were entitled to use it as per Section 35.

The learned Single Judge granted the injunction and restrained the defendant from using ‘Goenka’ in (i), (iv) and (vii). The judge held that the defendant infringed the plaintiffs’ registered trademark ‘Goenka’. But, the judge permitted the defendant to run (ii), (v), (vi) and (viii).

The defendant filed an appeal before the Delhi High Court. This court ruled that the defendant (appellant) used ‘Goenka’ before the plaintiffs. Section 35 applies where individuals use the registered trademark in good faith. The court permitted the appellant to use ‘Goenka’ as it did not lead to confusion.

Exceptions to the bona fide use under Section 35

Various courts have weighed the exceptions to this Section. In Mr Anil Rathi vs. Shri Sharma Steeltech (India) Pvt. Ltd. (2020) the plaintiff and defendants were employed in manufacturing and trading steel products with the Rathi Foundation using the trademark ‘RATHI’. A Memorandum of Understanding (MoU) and a trust deed among the Rathi family governed the usage of this mark. Hence, a family agreement regulated its usage, and the defendants were beneficiaries under this agreement.

The plaintiff filed two interlocutory applications against the defendants before the Delhi High Court. He requested the court to prohibit the defendants from using the trademark ‘RATHI’. Moreover, the defendants filed a plea to use the same trademark.

The High Court observed that the ‘RATHI’ trademark licences issued by one of the defendants to third parties went beyond the scope of the MoU and Trust Deed. The defendant infringed the plaintiff’s registered trademark by granting licences to third parties and the same will not come under Section 35. He contended that he is entitled to use ‘Rathi’ as the trademark under this Section because his surname was ‘Rathi’.

The court ruled that this Section was inappropriate for this case as it only confines the personal usage of trademarks and does not encompass the issuance of licences. The court also ruled that the defendants did not authentically use the disputed trademark ‘RATHI’. Moreover, the recipients of the licences were operating the same business as the Rathi family. The court disregarded the defendants’ plea and affirmed that they did not authentically use the trademark ‘RATHI’.

In Manju Monga vs. Manju Mittal (2012), the plaintiff operated a firm ‘M/s Manju Monga Cookery Classes’ using the trademark ‘MANJU MONGA’S COOKING CLASSES’. Moreover, the defendant used her name  ‘Manju’ in “Manju Cookery Classes”. The plaintiff filed an interlocutory application before the Delhi High Court to prohibit the defendant from using the same trademark ‘Manju’.

The court ruled that the defendant infringed the plaintiff’s registered trademark ‘Manju’. Therefore, she was not eligible for defence under Section 35 of the Trademarks Act as she could not prove that she authentically used the trademark. Moreover, she had a malafide intention to damage the plaintiff’s business reputation.

In Sangeetha Caterers and Consultants vs. New Sangeetha Restaurant (2023), the plaintiff and defendant operated restaurants ‘SVR Sangeetha Veg Restaurant’ and ‘NEW SANGEETHA RESTAURANT’ using the trademarks ‘SANGEETHA’ and ‘NEW SANGEETHA’ respectively. The plaintiff sought a permanent injunction to prevent the defendant from violating his registered trademark ‘SANGEETHA’.

The Madras High Court observed that they operated a similar business and the defendant deceitfully used the plaintiff’s trademark. The plaintiff’s trademark included ‘SVR’ (in small letters) as a prefix to ‘Sangeetha’ (in bold letters) comprising the suffix ‘Veg Restaurant’. The defendant’s trademark included ‘NEW’ in small letters instead of ‘SVR’.

After comparing both parties’ trademarks, the court observed that the main term ‘SANGEETHA’ was in bold letters and their prefixes and suffixes were in small letters. The court ruled that the defendant’s trademark could confuse the average public with imperfect memory. Therefore, the defendant’s case was regarding Section 29(2)(b) of the Trade Marks Act. His continuous usage of the disputed trademark ‘NEW SANGEETHA RESTAURANT’ amounted to an infringement of the plaintiff’s registered trademark. 

In Kirloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd. (1995), the Bombay High Court held that the individuals deceitfully using their names as trademarks are not eligible for defence under Section 35 of the Act. When it comes to incorporated companies, the chosen names for the trademarks are a matter of preference. On the other hand, in cases involving natural persons, using surnames is not a matter of preference. However, the court prohibited the defendant from using the trademark ‘Kirloskar’ as a business name.

In Skipper Limited vs. Akash Bansal & Ors. (2016), the Calcutta High Court held that Section 35 has no application on juristic persons operating businesses under fictitious names. It authorises juristic entities to operate businesses under fictitious names. Moreover, the Section has no application on properly established partnership firms if it is found that:

1. They have not used their partners’ full names; and,
2. They have fraudulently used such names.

Difference between Sections 34 and 35 of the Act

These Sections safeguard the owners of unregistered trademarks by prioritising them over the owners of the registered trademarks.

However, there are some differences between these Sections. Section 34 safeguards the rights of owners using unregistered trademarks before other individuals for a certain period. According to this section, no provisions of the Act authorise the owners of registered trademarks to infringe the individuals’ right to use similar trademarks before the first use of the latter trademark or the registration of the new trademark. Meanwhile, Section 35 states that owners of registered trademarks have no authority to prevent other individuals from authentically using their names or surnames as trademarks during business.

Conclusion

Trademarks assist customers in recognising brands and their products from those of other competitors in the markets.

Section 35 obstructs the owners of the registered trademarks from restricting other individuals who authentically use the same registered trademarks during trades. To address such situations, evidence must prove the following:

1. The defendants (someone who has infringed the plaintiffs’ trademarks) did not use registered trademarks with malafide intentions;
2. They had used the plaintiffs’ registered trademarks for authentic purposes; and
3. Such use did not harm the businesses of the trademark holders (plaintiffs).

Frequently Asked Questions (FAQs) 

What do you mean by TRIPS? What is its purpose?

It is a global legal agreement that involves all the members of the World Trade Organization (WTO). It sets out basic guidelines for how national governments can regulate various types of intellectual property (IP) concerning citizens of other WTO member countries.

The Preamble and Article 7 of the TRIPS agreement explicitly outline the objectives of TRIPS which are as follows:

1. To minimise distortions and obstacles to international trade.
2. To promote effective and sufficient protection of intellectual property rights.
3. To ensure that mechanisms for enforcing intellectual property rights do not hinder legitimate trades.

What do you mean by unregistered trademarks?

The trademarks which are not registered in compliance with the Trademarks Act. The owners of such trademarks have no protections against infringement. They have no authority to use the ® symbol. Moreover, such trademarks have ™ logos that hint they are not registered but are identifiable from other identical goods and services.

Is registration of trademarks compulsory? Which provisions of the Trademarks Act deal with the registration of trademarks?

No, the registration of trademarks is not compulsory. However, it provides proof of ownership for the registered trademarks. No individuals can take legal action for the violation of unregistered trademarks. 

These are the provisions of the Act that deal with the registration of trademarks:

1. Sections 3 to 17 of the Act are provisions related to the registrars and the requirements for the registration.
2. Sections 18 to 26 are related to the procedures of registration and its duration.
3. Sections 27 to 36 deal with the effects of registration.

What are the main types of intellectual properties?

There are four main types of intellectual properties:

1. Trademarks [Section 2(1)(zb) of the Trademarks Act 1999];
2. Copyrights [Sections 13 and 14 of the Copyright Act 1957];
3. Patents [Section 2(1)(m) of the Patents Act 1970];
4. Designs [Section 2(d) of the Designs Act 2000].

What are the objectives of the Trademarks Act?

This Act provides statutory defence for rights related to trademarks in India. As far as its objectives are concerned, these are as follows:

1. To modify and unite the statute regarding the trademarks;
2. To facilitate the registration of trademarks;
3. To encourage fair protection of trademarks; and
4. To prohibit the use of defrauding trademarks.

References 

• Dr. Jyoti Rattan, Bharat’s Trademarks Law, 1st Edition, 2021.
• V K Ahuja, Law Relating to Intellectual Property Rights, LexisNexis, 3rd Edition, 2017.

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