The relationship between trademarks and trade names, or corporate names, often raises intricate legal questions concerning the rights and limitations of parties involved. This article delves into a recent case before the Hon'ble Division Bench of the High Court of Delhi, wherein the issue of incorporating a trademark into a company or trade name was scrutinized.

Background:
The case under consideration revolves around the use of the trademark "MABELLE" by the defendants in their company name and business communications. Initially, an injunction was issued restraining the defendants from using the trademark on any of their products. However, a subsequent modification by the District Judge permitted the defendants to include "MABELLE" as part of their company name and in their business communications, leading to an appeal filed by the plaintiff.

Analysis
The central question before the Hon'ble Division Bench was whether the modification of the injunction was justified, allowing the defendants to incorporate the trademark into their company name. The Bench's analysis hinged upon various legal provisions, primarily focusing on the intersection between trademark law and company law.

Section 16 of the Companies Act, 2013:
The Division Bench highlighted Section 16 of the Companies Act, 2013, which does not confer an absolute right to use words forming part of a corporate name. This provision underscores that the Central Government may initiate rectification proceedings if a registered proprietor of a trademark contends that a corporate name is identical or substantially similar to their registered trademark. Thus, the mere inclusion of "MABELLE" in the defendant's company name does not automatically absolve them of trademark infringement.

TM Act 1999:
Additionally, the Division Bench referenced Section 29(6)(d) of the Trademarks Act, 1999, which governs the use of trademarks in the course of trade. This provision prohibits the unauthorized use of a mark that is identical or deceptively similar to a registered trademark, even if used as part of a company or trade name. Therefore, incorporating "MABELLE" into the defendant's business communications or company name without authorization falls within the purview of trademark infringement.

Conclusion:
In light of the legal provisions and principles elucidated above, the Hon'ble Division Bench rightly concluded that the defendants should be restrained from using the trademark "MABELLE" as part of their company name. The decision underscores the importance of safeguarding trademark rights and preventing unauthorized use, even within the context of corporate nomenclature. This case serves as a precedent clarifying the limitations on incorporating trademarks into trade names or corporate identities without proper authorization, thereby upholding the integrity of trademark law.

Case Title: LOREAL S.A. Vs Ravi Gandhi-DB
Order Date: 07.12.2022
Case No. FAO (COMM) 116/2023
Neutral Citation:NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, H.J.

Disclaimer:
This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539