Legal Remedy for Unregistered Trademark Holders

The laws surrounding unregistered marks are derived from principles of unfair competition or unfair business. Specifically, it is considered unfair for somebody to trade on the goodwill you have built up around a mark in order to sell competing goods or services. A famous unregistered trademark can be protected from dilution.



“No body has any right to represent his goods as the goods of somebody else.”- Lord Halsbury Passing Off (not referring to college or school here) is a common law tort, which can be used to enforce the rights of an unregistered trademark holder. What it does is that it prevents one person from misrepresenting his goods and services as that of another. This tort is available where there is a prospect of confusion of identity through the unauthorised use of similar marks or get up and is likely to damage the goodwill and reputation of a business. Simply put, you can’t pass off some body else’s goods and services as your own, that’s all.

Pic Courtesy- Unimarklegal

Trademark is the identification mark of any company or organisation. A customer relates any trademark with the quality of products and reputation of the company that is using it. It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these elements that identifies a product, service or firm that has been legally registered as the property of the firm. Trademarks grant the owner the right to prevent competitors from using similar marks in selling or advertising.

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Passing Off Concept

The concept of Passing Off has been extended over time. The concept of “personality rights” is an extended form of Passing Off. Celebrities use it as a means of enforcing their “personality rights” in common law. Another form of extended Passing Off is known as “reverse passing off.” This is when the defendant claims the plaintiff’s work as his own.

Fundamentals and Modern Elements of Passing Off

In the case of Reckitt & Colman Ltd. V. Borden Inc. (1990) RPC 341, The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style. 
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. The court must look at the work as a whole and decide whether the latter representation is sufficient to ensure that a substantial body of readers will not be misled. The three fundamentals or the classic trinity of Passing Off were laid down as:

  • Reputation
  • Misrepresentation
  • Damage to goodwill

How to Apply Passing Off as a Legal Remedy in India

In India, the Passing Off remedy is available in cases of unregistered trademarks as laid down in section 27 of the Trademark Act, 1999. Section 27 of the Act states that: No action for infringement of unregistered trademark –

(1) No person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered trademark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

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How Passing Off Can Be a Useful For Trademark Holders

The concept of passing off is a very valuable instrument to protect the rights of those trademarks holders who do not register their marks due to varying reasons. Further, it recognises that registration is not a “necessity” but it is always better to register your mark for practical purposes. This concept has been used on numerous instances and provides relief to those who don’t register their marks and it looks down upon those who try to pass off goods as those of another.

In Tata Sons v. Manu Kosari, 2001 (1) CTR 339(Del.), it was held that "the rendering of Internet services is also entitled to protection the same way as goods, services are, and trademark law applies to activities on the Internet". With technological advances changing the way we provide goods and services, particularly in cyber space, domain names are also now entitled to equal protection as trademarks as they are no longer considered as mere addresses.

Unregistered Trademarks:

An "unregistered trademark" is one which does not possess legal benefits. But in some cases, an unregistered trademark may get common law benefits. Unregistered marks are defined as marks which are not registered in relation to goods or services (that is names, marks or logos used in relation to a business) under the Trademark Act. Though under s. 27 no action for infringement is allowed for unregistered trademarks, it can still be protected by means of common law tort of passing off. To succeed in such an action, it is necessary to establish that unregistered mark has comparable goodwill or reputation in connection with the product, service or business with which it is used.

Passing Off prevents use of Unregistered Trade Mark 

Owner of an unregistered trademark may be able to prevent use by another party of an infringing mark pursuant to the common law tort of passing off. The action against passing off is based on the principle that 'a man may not sell his own goods under the pretence that they are the goods of another man'. Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business. There are certain essential ingredients of a passing off action.

  • The plaintiff has to prove that there is a similarity in the trade names;
  • The defendant is deceptively passing off his goods as those of the plaintiff;
  • There is bound to be confusion in the minds of the customers.
  • The test to be applied in such matters is as to whether a man of average intelligence and of imperfect recollection would be confused.

Civil remedies in Trademark

The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit. The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.The order of interim injunction may be passed ex parte or after notice. The Interim relief's in the suit may also include order for:

  1. Appointment of a local commissioner, which is akin to an “Anton Pillar Order”, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
  2.  Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

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Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007)

Amul has won the trade mark case in Gujarat and no one else can use it.The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trade mark infringement cases, against two local shop owners ? Amul Chasmaghar and its partners and Amul Cut Piece Stores in the District Court, Anand.The District Court, Anand passed an order dated 25 April 2007, ruling that it was a clear case of infringement and restrained the two from using the Amul trademark.

Amul Chasmaghar had challenged this interim injunction in the Gujarat High court. The Gujarat High court ruled the decision in favour of Amul, terming the order passed by the trial court as true, correct, legal and in consonance with the facts of the case, as well as in accordance with the provisions of the Trade Marks Act 1999.

 It can be drawn that Indian Trade Mark Law must me updated on frequently keeping in pace with the dynamic and new methods of Trade Mark infringement. Both Courts and Enforcement authorities must be well equipped and be trained for efficient disposal of cases relating to Intellectual Property.