A Curious Case from the Kerala High Court- Trademark conflict over Family drama

An unusual legal conundrum was brought before a division bench of the Kerala High Court, leaving many wondering- Can a family court decide a trademark infringement dispute? This is one-of-a-kind case and could be a precedent for the future cases involving Trademark disputes between the spouse.

FACTS:

• The Petitioner- Mr. C. K. Chandran, filed a suit before the Family Court seeking a permanent prohibitory injunction against his wife, Mrs. Manju, to prevent her from entering two shops in Changanacherry, Kerala.

• The Respondent- filed a counter claim, alleging that the said shops are being run under the name “CALLUNA”, over which, she holds a valid title and therefore, sought an injunction against the Petitioner from using it in any manner.

• The Family Court rejected the Petitioner’s claims and granted the Respondent’s counter claim. The Petitioner was accordingly ordered to remove the trademark from signage and social media, and prohibited from using the trademark CALLUNA in respect of any shop.

• Thus, an appeal against the said Order was filed before the Honourable High Court of Kerala.

The question here was whether a counterclaim, which runs beyond the original petition, particularly with respect to shops which are not part of the subject matter, would be maintainable. This was not considered by the Family Court. Accordingly, the Honourable High Court remanded the matter back to the Family Court to reconsider  whether the omnibus order of injunction against the petitioner is maintainable under the provisions of the Trademark Act even to shops which are not subject matter of the original petition filed by him. The Court added that all objections of the petitioner, including of maintainability, will be considered by the learned Family Court. .

This case raises an intriguing question- Does a Family Court have the jurisdiction to adjudicate trademark disputes? While the Honourable High Court did not address this issue, it’s worth exploring the legal provisions behind this jurisdictional authority.

An argument in favor of the Family court’s jurisdiction stems from the fact that the Family court has the powers of a District Court. Hence the Court can entertain a suit with respect to the property belonging to the parties. This is outlined in Section 7 of the Family Courts Act. The relevant Section is extracted below:

Section 7. Jurisdiction.—(1) Subject to the other provisions of this Act, a Family Court shall— (a) have and exercise all the jurisdiction exercisable by any district court or any subordinate civil court under any law for the time being in force in respect of suits and proceedings of the nature referred to in the Explanation; and

Explanation.—The suits and proceedings referred to in this sub-section are suits and proceedings of the following nature, namely:—

(c) a suit or proceeding between the parties to a marriage with respect to the property of the parties or of either of them;

As Trademark is an intangible property, the Family Courts has the authority to adjudicate matters related to trademarks, belonging to the parties to the suit.

Having said that,  a question can be raised whether the Trademark ‘CALLUNA’ is a family-owned trademark?  A family-owned mark is one where members of the family have equal rights to use the mark, safeguarding the collective goodwill and legacy passed down through generations. In such cases, disputes are generally treated as family disputes, rather than commercial disputes.

However, in this case, the Respondent is the sole owner of the “CALLUNA” trademark and the applications were not filed jointly. This suggests that the dispute is not about maintaining a shared family asset, but rather about a commercial trademark owned by one spouse. In its order, the Family Court also noted that the Petitioner-husband operated the shops as a trustee, while the trademark is exclusively owned by the Respondent-wife. This also shifts the dispute from a family matter to a commercial one, governed by the Commercial Courts Act. If the case is established as a commercial dispute, it would fall under the jurisdiction of the Commercial Courts Act, 2015, which has an overriding effect under Section 21 of the Commercial Courts Act. However, the marital relationship between the parties introduces a non-commercial aspect to the case.. By remanding the matter back to the Family Court, the High Court is essentially asking for clarity on whether the injunction sought by the wife is valid under trademark law, particularly when it extends to shops not initially mentioned in the original petition.

With the case now returned to the Family Court, several questions arise. Will the court acknowledge the commercial aspect of the dispute and refer trademark matter to commercial courts? Or will it address the issue within the context of family law and property disputes, potentially setting a precedent for future cases involving family conflicts over intellectual property?

The outcome may provide more clarity on whether family courts should be handling trademark matters or if these should be reserved for commercial courts, especially when the trademark is not a shared family asset.

Advocate G.A. Srilakshmi