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Can we use another business name?

Can we use another business name?

Legal & Compliance

Vakilsearch Staff

Vakilsearch Staff

8 Oct 2020, 09:40 — 7 min read

What’s in a name? That which we call a rose by any other name would smell as sweet”. Quote from Romeo and Juliet by William Shakespeare. While Shakespeare may have said that a name does not matter, in the Business World, the name of the entity can make a lot of difference. We associate trademarks, brand identities, standards for service often with the name of the company. Trademark disputes over brand names can also involve expensive litigation. In this context, the recent controversy that Patanjali found itself into for naming its immunity booster “Coronil” is worth discussing. Against the background of this legal issue, we address crucial questions about choosing a name for your company.

 

A chemical company versus Patanjali – Tracing timelines of the battle for the name “Coronil”

  • Arudra Engineers Private Limited is a private firm based in Chennai. It is engaged in the manufacturing of chemicals, sanitisers, and industrial cleaning preparations. 
  • Arudra Limited has been using the name “Coronil” for its chemical preparations since the year 1993. Thus, claiming proprietary rights over the trademark “Coronil” 
  • Patanjali is an Indian Ayurvedic brand, that formulated an immunity-boosting tablet for the coronavirus, and named it “Coronil” tablet. 
  • Arudra Private Limited filed a case for trademark infringement against Patanjali in the Madras High Court in July 2020. 
  • Order of a single judge of the Madras High Court – On August 6, 2020, a single judge of the Madras HC issued an order restraining Patanjali from using the word “Coronil” on account of trademark infringement. Additionally, it also imposed a penalty of ₹10 lacs for infringement of a trademark possessed by Arudra Private Limited. 
  • On appeal, The division bench stayed the order. 
  • Supreme Court on Coronil trademark infringement – The Supreme Court provided relief to Patanjali and refused to enforce the restraining order against it. The Chief Justice, SA Bobde remarked: “It will be terrible to prevent the use of the word Coronil, just because there is a pesticide registered in its name”. While this comes as a major ruling on trademark rights, this has not ended the legal battle. Patanjali’s defence lies in the fact that its name serves a contemporary need which justifies the name on many grounds. However, Arudra Limited can still argue the case in the Madras High Court claiming prior use rights over the name. 

 

Essentials to know before choosing a trademark name 

In India, the Trademarks Act governs the process of grant of a trademark. It is the Registrar of Trademarks who is the authority for the first grant of a trademark.

 

Here are five handy tips to help you choose a trademark and avoid the risk of a trademark dispute or rejection at a later stage

 

1. Choosing and using your trademark fast 

The law of trademark gives primacy to the firm that has established first use. The proof of “prior use” in the trademark is likely to give you an edge over a competitor or another person using the same mark. This primacy to prior use often supersedes registration. Thus, if you started using the name first and someone else possesses a trademark registration for the name, the courts may still award the trademark to you.   

 

2. Doing a trademark search before applying for registration

It is a good idea to first run a trademark search to see if there exists any similarity in the trademark sought to be registered by you. A word mark search traces the similarity in words, sentences, or phrases used in your trademark. However, you will also need to do a phonetic search for verbal similarity. You can also use the free trademark search facility at Vakilsearch.

 

3. Identifying similarity with existing trademarks

This is probably one of the greyest areas of trademark registration, often leading to disputes. Take, for instance, the word “Nirma”, which is a well-known trademark business for washing powder. However, this does not mean that no firm in any industry can choose the word “Nirma”. While a washing powder or chemical company would be disallowed from using this word, a company operating in another industry can still make a case for trademark registration. Moreover, similar-sounding names such as Nirmal, Nirman, and Nirmax are also trademarks that have been granted registration.

 

4. Making an application to the registrar

The trademark registration or business registration works on a system of “class of goods” where goods of one kind that clubs under one class. Correctly classifying your product under the appropriate class is also important. The Registrar would then begin the process of assessment to see if your mark aligns closely with any other already registered mark. Based on this assessment, your trademark may be refused.

 

5. Responding to a trademark objection

In case of a trademark query regarding similarity with another mark, demonstrating differences in your mark from an existing trademark would be essential. Providing evidence of the use of your mark, establishing its distinctiveness through market share, accurately describing the ingredients of the mark are some of the ways. Every trademark objection or refusal response must be tailored with adequate proof to show that the two marks belong to different categories of goods or a different industry, business, or trade.

 

Vakilsearch’s wide network of trademark professionals can also help you trace and plug legal loopholes in your chosen mark.

 

Also read: Trademark registration is most important for online businesses

 

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Image source: shutterstock.com

 

Disclaimer: The views and opinions expressed in this article are those of the author and do not necessarily reflect the views, official policy or position of GlobalLinker.

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