Two Branches of a Family, One Brand Name: Who Owns the Trademark?

In Kerala, many well-known businesses carry the name of the family or the founder: a jewellery house, a textile shop, a bakery, an ayurveda brand, a chain of supermarkets. When the founder’s children or brothers later run separate businesses, each branch often keeps using the same name. For years nobody minds. The problem starts when one branch opens in another town, launches a website, files a trademark application, or when a customer complaint against one branch damages the name for all.

This article explains who owns a shared family name as a brand, how the Trade Marks Act deals with it, and the practical ways families settle it, ideally before it becomes a dispute.

Why this problem is common in Kerala

• Brands are often named after a person, a place or a family house name, and the name has been used by several relatives for decades
• Businesses were split informally, by oral arrangement, when the founder retired or died
• Each branch registered its own GST, trade licence and company or firm, but nobody registered the trademark
• Expansion to new towns, online sales and Gulf outlets bring two branches into the same market
• Google listings, social media pages and domain names create confusion, because customers cannot tell the branches apart

Who owns the name? The basic rules

Ownership of a trademark depends on use and registration, not on family seniority. The main principles under the Trade Marks Act, 1999 are:

• Prior use matters: a person who has used a mark continuously from an earlier date can protect that use even against a later registered owner (Section 34)
• Registration gives strong rights: the registered proprietor gets the exclusive right to use the mark for the registered goods or services, and can sue for infringement
• Goodwill can be protected without registration: an unregistered user can bring an action for passing off, based on goodwill and reputation
• Use of one’s own name: a person’s bona fide use of their own name is generally protected (Section 35), but this does not allow use in a way that misleads customers into thinking they are dealing with another business
• Joint ownership is limited: two persons who each use the mark independently in their own business cannot be registered as joint proprietors (Section 24). Joint registration fits only where the mark is used on behalf of all of them together

So, in a family, the question is not who is the eldest, but who used the name first, for which goods or services, in which area, and who has registered it.

Common situations and how they are usually resolved

Situation	What usually works
Founder’s business continues in one branch; others started later using the name	The continuing business is usually the owner; others may be given a written licence, or move to a distinct name
Two branches have used the name side by side for years in different towns	Honest concurrent use (Section 12) may allow both to be registered, with conditions such as area or a distinguishing addition
The family business was split, but the brand was never mentioned	A family agreement should now decide who owns the brand, and whether others may use it, for which goods and where
One branch has quietly filed a trademark application	Others can oppose the application within the opposition period, or seek rectification after registration (Section 57), if they have prior use
A branch is damaging the name through poor service or quality	A licence with quality conditions, or ending the shared use, protects the brand

Practical options for families

1. One owner, others licensed

One family member, or one company, becomes the registered owner of the brand. Other branches use it under a written licence that sets out the goods or services covered, the area, quality standards, how the name is displayed, royalty if any, and how the licence ends. This keeps one name in the market while making it clear who controls it. See assignment and licensing of a trademark.

2. A family brand-holding company

Where several branches are equal, a separate company can own the brand, with each branch holding shares. The company licenses the brand to each branch. Decisions about the brand are then taken by the company’s board under agreed rules, and a branch that leaves the family arrangement loses the licence but keeps its shares or is bought out.

3. Distinct brands with a shared heritage

Each branch adds a clear distinguishing element: a first name, a place, a different logo or colour scheme. A common family name can be combined with a branch-specific word and a distinct device, and each branch registers its own combined mark. This works when the branches are truly independent and want to grow separately.

4. Buyout

One branch buys the brand and the goodwill from the others, with a written assignment and payment. The others agree to stop using the name after a transition period. The assignment is then recorded with the Trade Marks Registry. See how to transfer ownership of a trademark.

5. Division by area or product

Families sometimes agree that one branch uses the name for jewellery and another for textiles, or one in Thrissur and another in Kozhikode. Division by product is easier to manage through separate registrations in different classes. Division by area is harder: assignments or registrations that create separate exclusive rights in different parts of India are restricted and need the Registrar’s approval, and online sales make area limits difficult to enforce.

What the family agreement should cover

Whatever option is chosen, it should be written down. A brand clause in a family settlement, or a separate brand agreement, should cover:

• Who owns the word mark, the logo and any tagline
• Which goods and services, and which classes, each branch may use it for
• Area of use, including online sales and outlets outside Kerala and abroad
• How the name will be displayed, so customers can tell the branches apart
• Quality standards and the right to inspect
• Who files and pays for registration, renewal and enforcement
• Domain names, social media handles and Google business listings
• What happens if a branch is sold, closes, or a member leaves
• Dispute resolution, preferably mediation or arbitration before litigation

Company names and trademarks

A company name approved by the ROC does not give trademark rights. If another person has a registered trademark that is identical or very similar to a company’s name, the trademark owner can apply to the Regional Director under Section 16 of the Companies Act, 2013 for the company to change its name, generally within three years of the company’s incorporation or change of name. So a branch that forms a company with the family name is not protected by the name approval alone. Check the trademark register before naming a company. See how to check trademark availability.

Steps to take now

1. List every family entity using the name, with the date each started using it and the goods or services
2. Collect proof of use for each: old bills, signboards, advertisements, licences, photographs, newspaper mentions
3. Run a trademark search to see what has been filed or registered, by family members or outsiders
4. Agree on one of the options above, in writing
5. File trademark applications that match the agreement, with user claims based on the proof collected
6. Record any assignment or licence with the Trade Marks Registry where required
7. Align domain names, social media and online listings with the agreement

If it has already become a dispute

• Opposition: if another branch’s application has been advertised in the Trade Marks Journal, file an opposition within the time allowed. See how to file a trademark opposition
• Rectification: if a registration was obtained wrongly, apply for rectification or removal under Section 57
• Infringement or passing off: court action, which can include an interim injunction. See trademark infringement
• Mediation: family brand disputes often settle better through mediation, because the parties have to live with each other and the brand afterwards

Litigation between family members over a brand is slow and expensive, and it damages the brand in public. Settling ownership by agreement while relations are still good is far cheaper.

Frequently asked questions

My father started the business. Do I automatically own the brand?

Not automatically. If the business and its goodwill came to you, by will, settlement or succession, the brand rights normally go with it. If several heirs share the business, they share the rights unless an agreement says otherwise.

My brother registered the family name as a trademark without telling us. What can we do?

If your branch used the name earlier and continuously, you may be able to oppose the application, seek rectification, or rely on your prior use as a defence. The proof of your earlier use is the key.

Can two family members be joint owners of a trademark?

Only where the mark is used for a business they carry on together. Where each runs a separate business, joint registration is not permitted, and a licence or separate distinctive marks is the better route.

Does using our family name protect us from an infringement claim?

Honest use of your own name is generally protected, but not where the way you use it confuses customers or takes advantage of another branch’s goodwill.

Should the brand be in an individual’s name or a company’s name?

For a business that will continue across generations, a company or a family holding company is usually more stable than an individual, because ownership can then pass through shares.

ചുരുക്കം (Summary in Malayalam)

കേരളത്തിൽ പല കുടുംബ ബിസിനസുകളും ഒരേ കുടുംബപ്പേര് ഉപയോഗിക്കുന്നു. ആരാണ് ബ്രാൻഡിന്റെ ഉടമ എന്നത് കുടുംബത്തിലെ മുതിർന്നയാൾ ആര് എന്നതിനെ ആശ്രയിച്ചല്ല, ആദ്യം ഉപയോഗിച്ചത് ആര്, ഏത് ഉൽപ്പന്നത്തിന്, ഏത് സ്ഥലത്ത്, ആര് രജിസ്റ്റർ ചെയ്തു എന്നതിനെ ആശ്രയിച്ചാണ്. ഒരാൾ ഉടമയായി മറ്റുള്ളവർക്ക് ലൈസൻസ് നൽകുക, കുടുംബ ബ്രാൻഡ് ഹോൾഡിംഗ് കമ്പനി, ഓരോ ശാഖയ്ക്കും വ്യത്യസ്ത ബ്രാൻഡ്, buyout എന്നിവയാണ് പ്രധാന പരിഹാരങ്ങൾ. ബന്ധം നല്ല നിലയിലായിരിക്കുമ്പോൾ തന്നെ രേഖാമൂലം കരാർ ഉണ്ടാക്കുന്നതാണ് ഏറ്റവും നല്ലത്.

This article gives a general overview of the law under the Trade Marks Act, 1999, the Companies Act, 2013 and related rules. The law and procedures are revised from time to time, and outcomes in brand disputes depend heavily on facts and evidence; for accurate and current requirements, refer to the Act, the rules as amended and the Trade Marks Registry. The article is not advice on any particular case.