[This post has been authored by SpicyIP intern Kaustubh Chakrabarti. Kaustubh is a second year BA.LLB. (Hons.) student at Hidayatullah National Law University, Raipur.]
On 10th October 2024, an intriguing question regarding jurisdiction of a family court over a trademark infringement claim came up (pdf) in front of a division bench of the Kerala High Court comprising of Justices Devan Ramachandran and M.B. Snehalatha. The petitioner, Mr. C.K. Chandran was seeking a permanent prohibitory injunction against the respondent, his spouse, Mrs. Manju, from entering into two shops under the trademark “Calluna” in Changanacherry, Kerala. The respondent objected to this and filed a counterclaim arguing that she was the owner of the “Calluna” trademark and therefore, sought an injunction against her husband from using it in any manner.
The Family Court, Kottayam had earlier passed an order rejecting the petitioner’s claim but allowed the respondent’s application for an injunction, thus restraining the petitioner from using the trademark. The husband was also directed to remove the trademark from the name boards/hoardings and social media, wherever he has used them in his personal capacity.
The High Court observed that the Family Court assumed the injunction sought for is confined to the subject matter and so, an injunction with respect to shops which are not part of the subject matter, would not be maintainable. However, in this post I’ll take a look at an aspect which was not considered by the High Court i.e. whether the family court is empowered to decide on prayers seeking injunction against the use of a spouse’s trademark?
Does A Family Court have Jurisdiction over a Trademark Infringement suit?
An argument in favour of maintainability of a trademark infringement lawsuit in a family court is that a trademark is essentially a ‘property’ and so, a family court is empowered to settle such disputes. S.20. of the Family Courts Act, 1984 also lays down that the provisions of the Act have an overriding effect over any other law in force that is inconsistent with the provisions of the Act.
However, in this case, it was argued by the petitioner that the order of the Family Court is not maintainable because trademark suits are commercial disputes, which can be adjudicated only by commercial courts (see here for the Linkedin post by the petitioner’s counsel on this argument). They also argued that, S.20. of the Family Courts Act should not apply over Trademarks Act, 1999 and the Commercial Courts Act, 2015 as the provision talks of overriding effect over existing laws in force at the time of passing of the Act and both these legislations were passed after the Family Courts Act. In fact, S.21. of the Commercial Courts Act has an overriding effect as well and hence, should ideally gain primacy over the Family Courts Act. While this reasoning was not deliberated upon by the High Court, this can prove to be a useful argument going forward, now that the matter has been remanded back to the Family Court.
Is the Present Case a Matter of Family Owned Trademark?
One angle to look at this case could be by looking at “Calluna” as a Family owned trademark. Family owned trademarks are used by a person in relation to a family run business, where the ownership and rights of use of the trademark lies equally with each member of the family who is involved in the business. In disputes regarding such trademarks, courts are of the view that they may be treated as family disputes and not commercial disputes. This view is taken in order to not disturb a familial arrangement.
Family owned trademarks are, however, jointly owned. In this case, the wife was the sole owner of the trademark. Therefore, the question of the dispute being that of a family owned trademark does not arise and hence, it should not be treated as a family dispute.
Adding on to the above argument, the Kerala High Court affirmed one of the findings of the Family Court, which was that the shops in question are being held by the husband in the capacity of a trustee and even though the rooms are rented by the husband in his name, it should be assumed that the wife is the beneficiary. Therefore, the existence of a trust further demonstrates that the nature of the dispute is commercial in nature and should be beyond the jurisdiction of the Family Court.
On the other hand, the High Court also observed that granting an injunction against the petitioner can be detrimental to the interest of the respondent. This shows that the dispute has some non-commercial aspects as well. Although the Court did not dive deep to pass any finding on the merits of the case, it would have been helpful if it could have shed some light on the aspects of the commercial nature of the dispute as well.
Concluding Remarks
The High Court clearly pointed out that the remedy sought under the respondent’s counterclaim goes beyond the shops that were a part of the subject matter of the present dispute dealt by the Family Court. Therefore, it has remanded the matter to the Family Court for reconsideration so that there is more clarity as to whether an injunction against the petitioner is maintainable under the provisions of the Trademark Act extending to shops which are not the subject matter of the original petition filed by him.
This direction, however, leaves open the question of whether the family court is empowered to pass an injunction against the use of a spouse’s trademark. Since the parties were in a marital relationship, the nature of the dispute does concern family law. But the element of trademark infringement and the missing “family owned trademark” element introduces a commercial angle to the dispute. With the ball now under the family court, it’ll be interesting to see if this question comes up before it and proves to be a material aspect leading the Court to revise its previous stance.