201807.24
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Use of family name held to be non-infringing “fair use”

The parties are at loggerheads over use of family name PATIL in relation to fragrance business. The first round of litigation was before the District court, Bengalaru and the parties have now approached Karnataka High Court (at Bengaluru) in appeal. The appeal has been preferred by Somashekar P. Patil (Som) aggrieved by exparte injunction being set aside by Additional City Civil Judge, Bengaluru. Som had filed the suit to safeguard his rights in the trademark PATIL and trade name PATIL PARIMALA WORKS and restrain the Defendant, D.V. Patil (DVP) from using the mark “Patil Fragrances”.

Som in the appeal contends:

  1. The word-mark “PATIL” is registered since 1978 and he is using “PATIL PARIMALA WORKS” from January, 1978.
  2. DVP is using the name “PATIL FRAGRANCE” in relation to his business from the year 2017 and this amount to infringement as well as passing off.
  3. ‘PATIL FRAGRANCE’ is identical and deceptively similar to both the registered trademark PATIL and trading name ‘PATIL PARIMALA WORKS’.
  4. Som has filed several documents to substantiate use of the trademark PATIL and trade name PATIL PARIMALA WORKS.
  5. The learned Trial Judge erred in setting aside the injunction granted earlier.

DVP countered:

  1. Som has suppressed material facts.
  2. Som and DVP belong to the same family and share common surname. Further, DVP is an ex-employee and brother of Som. Thus, with an intention to obtain ex-parte temporary injunction Som has deliberately not disclosed these facts.
  3. Prior to 2015, DVP was working as General Manager with ‘Patil Parimala Works’, Som’s concern.
  4. The family members of Som and DVP use the surname ‘ PATIL’ predominantly. ‘Patil Fragrance’ contains the word ‘Patil’ which is his surname. Hence, conducting any business or trade using the surname is permitted and not barred under the Act.
  5. Relevant documents have been filed to substantiate use of the name Patil as well as the proprietorship concern, Patil Fragrances.

The High Court Ruling:

  • Article 19 (1) (g) of the Constitution of India guarantees fundamental right of any citizen to practise any profession, carry out any trade, business, etc., subject to certain reasonable restrictions. Thus, while dealing with the said subject, the Courts have to take care before granting an injunction against any person in this regard.
  • Section 35 of the Trademark Act permits bonafide use of own name, address or description of goods or services by a person and a registered proprietor cannot interfere with such use.
  • DVP has filed documents substantiating use of his name, further, he is a member of Som’s family and all the family members invariably use the word “Patil” as surname. Merely because Som’s surname is ‘Patil’, that itself is not a ground to injunct DVP from using the word/name ‘Patil’ in relation to his business.
  • Som’s contentions directly infringes Article 19(1)(g) of the Constitution and at the same time Section 35 of the Trademarks Act enables DVP to use his name/family name in relation to his business.
  • The Court also considered the fact that Som is selling products, i.e., incense sticks in the name and style “Ullas”, whereas, Patil is selling incense sticks named as “Hitushree5”. Except for the common name ‘Patil’ the brand names used by the parties are distinct. Therefore, the contention that DVP is passing off his goods as that of Som did not find favour.

In view of the above findings the High court refused to interfere with the order passed by the District Court and accordingly dismissed the appeal.