07 June 2018

Trademark passing-off – Use of surname not prohibited

Karnataka High Court has upheld vacation of interim injunction in a case involving alleged passing-off in names of companies - Patil and Patil Parimala Works, and Patil Fragrances. The plaintiff had contended that by using the word ‘Patil’, the defendant was infringing the rights of the plaintiff.

The defendant however pleaded bona fide use of his own surname. Relying upon Section 35 of the Trademarks Act and Article 19(1)(g) of the Constitution of India, the Court in Somashekhar Patil v. D.V.G. Patil  dated 8-5-2018 was of the view that it cannot be held that the defendant was passing-off or marketing goods deceptively as that of the plaintiff-appellant.

It noted that both parties hailed from Patil family and were relatives. It was observed that the parties were using their surname Patil in their respective business, for products having brand names – ‘Ullas’ and ‘Hitushree’, which were completely different, and that the defendant was a bona fide user of the name ‘Patil’

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