The Lodha brothers dispute: where identity meets IPR

Abstract – This article explores the legal and commercial implications of using surnames as trademarks in India, using the high-profile dispute between real estate entrepreneurs Abhishek and Abhinandan Lodha as a focal point. It examines the core issue of whether family names can be trademarked, particularly when used by multiple entities operating in the same industry and trademark class. The question of “whether surnames can be trademarked” is one that the author tries to answer through looking at it from the lens of the primary legislation surrounding trademarks in India i.e. The Trademarks Act 1999, and further discussing relevant cases to understand the approach that the Indian Courts have taken regarding the matter. Discussions of trademarking surnames naturally raises the question of “whether multiple entities can own a singular trademark” which is discussed in the latter half of the article, by looking at the relevant sections of the Trademarks Act and the cases that followed. This article strives to get across the point that trademark jurisdiction of family names raises complications and questions that require a multifaceted and nuanced approach and that the answer lies somewhere in the intersection of the questions raised. The legal battle of the ‘Lodha’ name that started in 2015 is used as a microcosm.

Introduction

As the 5000 cr Lodha brothers dispute over the use of the family name lodha comes to an end through mediation under former Supreme Court Justice RV Raveendran, discussions on whether or not a family name can be trademarked have resurfaced^[1].

The Lodha family members had to defend their separate company brand names against different trademark claims. Abhishek Lodha as the managing director of Macrotech Developers Ltd stated his authority over the “Lodha” trademark because the company expended significant resources to develop their brand throughout multiple decades. After the House of Abhinandan Loda started its operations the owner Abhinandan Lodha maintained his legitimacy to use his family name despite claims from Abhishek Lodha. The Bombay High Court intervened in the dispute before sending the parties to mediation^[2] due to its understanding that this dispute involved family members. The outcome brought resolution between the real estate giants through mutual agreement yet the dispute demonstrated trademark complexities which emerge when family names serve as trademark material within identical business fields and classifications.

Can family names be trademarked?

The Trade Marks Act, 1999 governs the registration and enforcement of trademarks in India. While the Act does not explicitly exclude surnames from trademark protection, Section 9 of the Act lays out the absolute grounds for refusal of registration. It prohibits the registration of marks that are:

• Devoid of any distinctive character,
  
  
• Likely to deceive or cause confusion,
  
  
• Composed exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of trade.
  
  

A surname, in and of itself, is typically not considered inherently distinctive and so usually lacks protective elements as a trademark on its own. However, courts have historically recognised surnames as valid trademarks when they acquire secondary meaning i.e. an association with a particular source of goods and services that assures quality and ensures consumer trust based on the said surname.

In Bata India Ltd. vs. Pyare Lal & Co.^[3] , the Allahabad High Court recognized “Bata” as a well-known, distinctive trademark despite being a surname. The Court granted an interim stay against the defendants for using the similar mark “Batafoam,” citing trademark infringement and passing off. Similarly, the Gujarat High Court in Mahendra and Mahendra Seeds Pvt. Ltd. v. Mahindra & Mahindra Ltd.^[4] held that the name “Mahindra” had acquired distinctiveness and secondary meaning in trade.

However, courts are reluctant to completely bar individuals from using their own names, especially in bona fide ways. In Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blenders & Distillers Pvt. Ltd. (2015)^[5], the Delhi High Court reiterated that a person has the right to use their name for honest and concurrent use, provided it does not result in consumer confusion.

The legal discourse that the Lodha case followed is an apt example of the balancing act between granting protection to well established brand names and prohibiting a person from using their family name in bona fide ways. Although Macrotech’s legal argument centered around its registered ownership of the “Lodha” mark, the fact that both parties were biological heirs to the same name complicated matters. Macrotech’s case relied heavily on the argument of acquired distinctiveness, the idea that “Lodha” in the real estate industry had acquired a secondary meaning due to longstanding usage, reputation and advertising and had become uniquely associated with their brand. Yet, Abhinandan’s team pointed out that the surname was not invented or fabricated, but rather inherited.

The question of whether family names can be trademarked naturally raises a broader issue: Can a trademark be owned by multiple legal entities?

Section 11(1) of the Trade Marks Act, 1999, prohibits the registration of a trademark that is identical or similar to an earlier trademark if it relates to the same or similar goods or services and is likely to cause confusion. However, an exception to this rule is provided under Section 12, which allows the registration of such trademarks based on honest concurrent use. Additionally, Section 35 of the Act protects individuals from interference by a trademark proprietor or registered user when they are making bona fide use of their own name.

In the case of Goenka Institute of Education & Research v. Anjani Kumar Goenka and Others^[6], both parties incorporated the name “GOENKA” in their trademarks – “GOENKA PUBLIC SCHOOL” and “G.D. GOENKA PUBLIC SCHOOL.” The Court permitted the Appellant to continue using the name “GOENKA” under certain conditions. The Court concluded that the Appellant’s use constituted honest concurrent use and therefore allowed the coexistence of both marks for the same category of services.

The Lodha brothers’ dispute serves as a pertinent example of the challenges in trademarking family names. While Indian trademark law does not explicitly prohibit the registration of surnames, it requires that such names meet specific criteria to be eligible for protection. Additionally,the legal complexities surrounding ownership of a trademark by more than one legal entity were present. The judges and arbitrators must walk the fine line between the rights of business to have its own unique identity, protecting consumer trust in a brand name and preserving the constitutional right of a person to be able to build a brand around their identity, while deciding such cases. While this issue was resolved amicably, the legal issues that the case touched upon were of immense relevance. The disputes involving family names claimed by multiple stakeholders have been decided on a case by case basis so far. While the Trademarks Act allows for surnames to be trademarked, the test is one of consumer protection and unique identity.

^[1] Gaurav Laghate, ‘Lodha brothers agree to mediation to resolve brand name dispute’ The Economic Times (Mumbai, 23 November 2023).

^[2] The case is Macrotech Developers Ltd v The House of Abhinandan Lodha (COMMERCIAL IP SUIT (L) NO. 29381 OF 2023).

^[3] Bata India Ltd v Pyare Lal & Co AIR 1985 All 242.

^[4] Mahendra & Mahindra Paper Mills Ltd v Mahindra & Mahindra Ltd AIR 2002 SC 117.

^[5] Shree Nath Heritage Liquor Pvt Ltd v Allied Blenders & Distillers Pvt Ltd 2015 (63) PTC 551 (Del).

^[6] Goenka Institute of Education & Research v Anjani Kumar Goenka AIR 2009 Del 139.