What takes precedence family settlement agreement (FSA) or a Trade Mark Rights

Macrotech Developers, formerly known as Lodha Developers, have filed a trademark infringement suit against the House of Abhinandan Lodha (HoABL), seeking an injunction to prevent HoABL from using the 'Lodha' trade mark. The lawsuit aims to protect Macrotech's brand and prevent consumer confusion.

The dispute originates from a 2015 split between brothers Abhishek and Abhinandan Lodha, which was formalized in a 2017 Family Settlement Agreement (FSA). Under this agreement, Abhishek Lodha retained control of Macrotech Developers, including the Lodha brand and its intellectual property rights, while Abhinandan Lodha received ₹500 crore.

Abhishek Lodha contends that the FSA explicitly granted all brand-related intellectual property, including the 'Lodha' and 'Lodha group' trademarks, to Macrotech Developers. He argues that the agreement prohibited Abhinandan from using the 'Lodha' brand name in any capacity.

Conversely, Abhinandan Lodha claims there was no non-compete clause in the FSA. He argues that the agreement only restricted the standalone use of the 'Lodha' trademark, implying that it could be used in combination with other terms. Additionally, Abhinandan argues that HoABL is involved in horizontal development (plotted land development) whereas Macrotech is engaged in vertical business (high-rise buildings), and hence, the marks do not fall under the same trade mark classes ( 36- real estate affairs; 37- building construction).

Issues – In the  present case, issues can be distilled to the following key questions - 

1. Is there an infringement of the trademark irrespective of the dissimilarity of the goods or services offered by the two entities? 

2.  Whether the infringement would fall under sec. 29(5) of similar goods and services? 

3. Can a registered proprietor interfere with bona fide use by a person of their name?  

Prima facie, it seems that the goods and services offered are similar given that Abhinandan has acquired the American Centre property in South Mumbai to be developed into a super-luxury residential project. This would mean that HoABL would be involved in building vertical buildings, thereby falling under the same trademark class as Macrotech. This would ease Macrotech´s argument to prove infringement u/s 29(5), wherein brand dilution can be proved by establishing that –

• that the person (infringer) uses the registered trademark as his trade name or business concern and 
• that the trade or business deals with goods and services for which they mark is registered. 

Additionally, when it comes to the use of personal name as a right granted under TM law, the Indian courts have reiterated that only natural persons can rely on the defence when using personal names as trademarks u/s 35 of the TM act. Furthermore, it should be noted that the courts have also laid down that FSA, MOU and trust deeds supersede the rights granted under section 35 in case of disputes involving family names. 

Meanwhile, the Bombay High Court has appointed Justice Raveendran to mediate the dispute between the two brothers.