Convergence of Trademarks and Trade Names: Resolving the Conflict Between Trade Names and Trademark Rights Under Trademark Law vis-à-vis Company Law

Protection of trademarks through registration under the Trademark Act, 1999, provides a registered proprietor with exclusive rights to use the mark in respect of goods and services for which the mark is registered. The Act provides rights to the registered proprietor of a trademark as well as identifies instances of infringement for which remedy may be sought by an action of infringement. Section 29(5) of the Act identifies a unique form of infringement whereby a registered trademark may be infringed by the use of such trademark as a trade name or business concern in respect of the same classes of goods or services. The authors attempt to examine the implications of the provision as well as its limitations in identifying certain acts as cases of infringement. It is highlighted that the provision does not provide relief in circumstances where a registered trademark is used by another person as his trade name, name of business concern, or a part thereof, in respect of dissimilar classes of goods or services. Further, the authors also explore the possible overlap between the application of Section 29(5) and Section 29(4), if any. An analysis of the judicial response in cases of infringement arising out of the use of trademarks as trade names highlights the limitations emerging due to the literal and narrow interpretation of the provision drawn by the courts. The remedy available under the Companies Act, 2013 with respect to change or rectification in the name of the company has been identified as an appropriate remedy in such cases.