My Name is Gautam Gambhir, and I'm not a Restaurateur!
Trademark concerns have been a bane for popular personalities, and cricketer Gautam Gambhir is one such victim. A non-alcoholic and a firm oppose of alcohol consumption, Gambhir was in for a rude shock when he learnt that a pub in Delhi held his name – Ghungroo By Gautam Gambhir. It so happens that the owner of the pub is a namesake of the cricketer with the same surname – Gautam Gambhir.
Known to take a strong stance on social issues, Gambhir’s surprised fans swarmed him with queries regarding his association with the impugned pub over social media.
Trademark Law relating to registration of names/surnames
The registration of surname as trademark was not allowed under the Trademark and Merchandise Act 1958. And the new Trade Marks Act 1999, does not hold any provision to allow or disallow the use of surname or personal names as trademarks.
Generally, a trademark is not granted if the mark that is applied for has no significance other than being a name. This was in order to accord protection to the number of proprietors having a same name registration. A name may only be granted trademark registration until it proves its acquired distinctiveness and carries goodwill.
Mahindra and Mahindra, Bajaj, Honda, Ford, etc., are examples of trademarks across the globe who were able to register their surnames as trademarks owing to their distinctive nature.
The USPTO grants trademark protection to names, only if certain criteria is addressed. One such condition is that the applicant needs to prove that his/her name has acquired a ‘secondary meaning’ in relation with the business and their name/surname is widely recognized.
Mahindra and Mahindra v Mahendra and Mahendra [2003 (26) PTC 434 (Guj)] , Dr. Reddy Laboratories v Reddy Pharmaceuticals [2004 (29) PTC 434 (Del)] are few trademark infringement lawsuits, which was ruled in favor of the plaintiffs. In all three cases, the plaintiffs acquired distinctiveness and secondary meaning in the names/ surnames through continuous and extensive usage. It was observed by the court that the plaintiffs earned significant goodwill, trade reputation and could be distinctively identified.
The above cases clearly lay emphasis on the trademark protection criteria, that a name must be popular and distinct. In the present scenario, it appears that Gautam Gambhir, the cricketer, is certainly recognized by more number of people than Gautam Gambhir the restaurateur. Several Indian cricketers have turned restaurateurs in the true sense, including Sachin Tendulkar, Sourav Ganguly, Zaheer Khan, Yuvraj Singh and Virat Kohli. Hence, when a restaurant on the name of Gautam Gambhir came up, it was but obvious that the general public related it to the cricketer himself. Keeping in mind the court precedents and Gautam Gambhir being a well-known celebrity it can safely be concluded that the present proceedings will most likely be decided in favor of Gautam Gambhir the cricketer and not Gautam Gambhir the restaurateur.