Family trademarks are marks which are used by a person for his family business, where the trademark ownership lies with each member of the family. Many trademark suits which are filed concerning family trademarks are mostly sibling rivalries who want to cash upon the goodwill the trade name has acquired through years of hard work of their ancestors.
Disputes regarding family trademarks between family members can arise when the family head who owned business retires or dies or when there is a split in the business, and other family members claim ownership over the trademark or trademark infringement giving rise to disputes.
For instance, a dispute arose between the Ambani brothers when their family business under the mark “Reliance” got divided among the two brothers and each claimed ownership over the family trademark. Similarly, the family feud among the owners of one of the country’s major bicycle manufacturers, Hero Cycles began when the company was split in May 2010 it was decided its name Hero Cycles could be used only by Om Prakash Munjal, one of the four Munjal brothers who had established the Hero group in Ludhiana in 1956 while the other divided units of the family have to use other names.
In 2017 Madras High Court decided on a case dealing with family trademarks, where two brothers claimed their rights to use the goodwill in the mark “Sri Krishna Sweets” by virtue of inheritance.
The Court opined that the name “Sri Krishna Sweets” had been established and used since 1948 by the late Mahadeva Iyer who had started the family business with this trademark and the parties on the basis of their linage and family legacy are free to use the family trademark equally. The Court also relied on the case of Narasus’s Coffee Company Vs Narasu’s Roller Flour Mill and made it clear that in the trade mark dispute between family members should not be treated as a trade mark dispute but must be looked as a family dispute.
In the case of SRF Foundation v Shri Ram Education Trust, both the parties are sons of Bharat Ram and grandsons of Sir Shri Ram. The main contention was who would use the trademark ‘the Shri Ram School’ and whether other family members can use the mark to render the same services with the same name.
The Court held “that both the brothers having a common lineage, prima facie have common rights and cannot exclude the other from using the subject mark. The mark SHRI RAM was first used by Late Sir Shri Ram, who established several educational institutions. Subsequently, the name SHRI RAM was adopted by the family in relation to their respective endeavour and the adoption of the mark SHRI RAM by the Defendant is not mala fide and the family members have concurrent rights to use the mark for similar services.”
The Court further held that “the goodwill and reputation in the trademark adopted by the grandfather shall endure to the benefit of all the heirs unless something to the contrary is shown so as to exclude the other heirs. One member of the family cannot claim sole and exclusive ownership of the mark. All the heirs of the person who first adopted a mark and put the same to use and earned goodwill and reputation shall, prima facie, have equal rights to adopt and use the same.”
Therefore, generally, it is not possible to claim sole proprietorship over family trademarks. The family trademarks can be used with other family members without facing any dispute through non-compete agreement, mutual understanding and co-operation regarding the use of family trademarks by which all the family members can use the family trademark simultaneously for same/different specifications of goods/services to avoid conflict.
