The intersection between family names and trade mark protection frequently generates complex disputes in Indian intellectual property law. Courts are often required to balance an individual’s right to use his or her own name in trade against the statutory and common-law rights of a prior trade mark proprietor. The decision of the Principal Commercial Appellate Authority, Kottayam, in Murickens Marketing System LLP v. Alex G. Murickan offers a detailed and instructive exposition of these principles. This article analyses the factual background, legal issues, reasoning, and broader implications of the judgment, with particular emphasis on the scope and limits of the “family name” defence under Section 35 of the Trade Marks Act, 1999.
1. Introduction
Trade mark disputes involving family or surnames occupy a unique space in intellectual property jurisprudence. While a surname may be inherently descriptive or common, long and consistent commercial use can transform it into a distinctive badge of origin. Indian courts have repeatedly held that such acquired distinctiveness is entitled to protection, even against claims by other persons bearing the same name. The Murickens case revisits these principles in the context of a commercial dispute between close family members, thereby highlighting the tension between personal identity and consumer protection.
2. Factual Background
The dispute arose between two brothers engaged in the business of manufacturing and marketing electrical, electronic, and solar energy products in Kerala. The plaintiffs traced their commercial activity under the marks “MURICKENS”, “MURICKENS GROUP”, “MG”, and “FLYLINE” to the early 1990s. Over time, these marks were extensively promoted through print and electronic media, websites, and dealer networks. The plaintiffs also secured statutory registrations for several of these marks across different classes under the Trade Marks Act, 1999.
The defendant, the younger brother, subsequently commenced a similar business under the name “Murickens Trading Company” and marketed comparable products. Although the defendant also used a separate registered mark, “BRIGHT STAR”, the plaintiffs alleged that the dominant and prominent use of the word “Murickens” amounted to infringement and passing off. According to the plaintiffs, such use was calculated to exploit their goodwill and cause confusion among consumers.
The defendant resisted the suit primarily on the ground that “Murickens” was a family name. He contended that the name had been used by their father since the mid-1970s and that all members of the family were entitled to use it in business. Relying on Section 35 of the Trade Marks Act, the defendant asserted a statutory right to bona fide use of his own name.
3. Trial Court Decision
The Commercial Court partly decreed the suit in favour of the plaintiffs. After a detailed appreciation of oral and documentary evidence, the court found that the plaintiffs were the prior users of the marks in relation to the goods concerned and had acquired substantial goodwill and reputation. The plea that the business originated with the father in 1975 was rejected as unsupported by credible evidence.
The court granted a permanent prohibitory injunction restraining the defendant from using the plaintiffs’ registered marks or any deceptively similar marks. Importantly, the court drew a distinction between the defendant’s use of the composite mark “BRIGHT STAR” (with a logo incorporating the words “Murickens Trading Company”) and the standalone use of “Murickens Trading Company”. While the former was held not to cause confusion, the latter was restrained on the ground of deceptive similarity.
4. Issues on Appeal
Cross appeals were preferred by both sides. The defendant challenged the findings on infringement, prior use, limitation, and the rejection of the family name defence. The plaintiffs, on the other hand, sought broader reliefs, including damages and rendition of accounts, contending that the infringement was deliberate and commercially significant.
The central legal issues before the appellate authority included:
Whether the plaintiffs were prior users of the marks and entitled to statutory and common-law protection.
Whether the defendant’s use of “Murickens Trading Company” amounted to infringement and passing off.
Whether Section 35 of the Trade Marks Act protected the defendant’s use of the family name.
Whether the relief granted by the trial court was legally sustainable.
5. Appellate Reasoning
5.1 Prior Use and Goodwill
The appellate authority affirmed the trial court’s findings that the plaintiffs were the prior users of the marks in question. Evidence of continuous commercial use, advertising expenditure, and market presence from the early 1990s was found to be compelling. The court reiterated the settled principle that, under Indian trade mark law, prior use prevails over later registration and subsequent adoption.
The court also emphasised that goodwill is not merely a function of registration but is built through sustained commercial activity. Once such goodwill attaches to a mark, the law seeks to protect consumers from deception and confusion.
5.2 Infringement and Passing Off
Relying on Section 29 of the Trade Marks Act and authoritative Supreme Court precedents, the appellate authority distinguished between infringement and passing off. It reaffirmed that infringement is a statutory remedy available to the registered proprietor, whereas passing off is a common-law action grounded in deceit.
The use of a registered trade mark as part of a trade name was held to squarely attract Section 29(5). The court observed that even if additional elements or logos are used, the adoption of the essential and dominant feature of the plaintiff’s mark may still constitute infringement. The test, as consistently applied, is that of a person of average intelligence and imperfect recollection.
5.3 The Family Name Defence under Section 35
The most significant aspect of the judgment lies in its treatment of Section 35. The court accepted that “Murickens” was indeed a family name. However, it held that mere proof of a surname is insufficient to invoke the protection of Section 35. The statute saves only “bona fide” use, and bona fides constitute the heart of the provision.
The court clarified that bona fide use implies honest adoption without an intention to deceive or to ride on the goodwill of another trader. Where the defendant adopts the family name for identical goods, after the plaintiff has already acquired reputation in that name, such use cannot be characterised as bona fide. The defence under Section 35, therefore, was held to be unavailable in the facts of the case.
In reaching this conclusion, the appellate authority relied on established jurisprudence, including decisions such as Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. and Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., which underscore that surnames can acquire secondary meaning and become exclusively associated with a particular source.
5.4 Composite Marks and Likelihood of Confusion
he Murickens decision carries important doctrinal and practical implications for trade mark law in India.
First, it reinforces the primacy of prior use and goodwill over claims based on ancestry or personal identity. The judgment sends a clear message that family relationships do not dilute the rigour of trade mark protection.
Second, the judgment clarifies that Section 35 is not an unfettered right to use one’s surname in commerce. Courts will closely scrutinise the honesty and timing of adoption, the nature of goods, and the likelihood of consumer confusion.
Third, the case illustrates the importance of evidence in trade mark litigation. Documentary records, advertisements, registration certificates, and even regulatory decisions play a decisive role in establishing rights and rebutting defences.
Finally, the judgment underscores the role of commercial courts in providing specialised and reasoned adjudication of intellectual property disputes, in line with the objectives of the Commercial Courts Act, 2015.
7. Conclusion
The decision in Murickens Marketing System LLP v. Alex G. Murickan represents a careful and principled application of trade mark law to a factually sensitive family dispute. By upholding the plaintiffs’ rights while recognising the limited scope of the family name defence, the court struck an appropriate balance between individual liberty and consumer protection.
For practitioners and scholars, the case serves as a valuable precedent on the interpretation of Sections 29 and 35 of the Trade Marks Act, 1999. It reaffirms that honesty in adoption and use remains the cornerstone of trade mark law, and that even a family name, once it acquires distinctiveness, cannot be freely appropriated to the detriment of established goodwill.