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 ‘
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:
- 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.
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 in 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 cyberspace, domain names are also now entitled to equal protection as trademarks as they are no longer considered as mere addresses.
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 Section 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 the 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 the injunction and direct the customs 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 a 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 an order for:
- 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 the inventory, etc.
- 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.
Amul wins trademark case in Gujarat High Court, (Sep 24, 2007)
Amul has won the trademark case in Gujarat and no one else can use it.The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trademark 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.
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