PASSING-OFF & ACTION UNDER THE TRADEMARK LAWS

Passing off is a type of tort, and its substantive part is established upon the common law principle. The general principle of passing-off states that no man can have any right to represent his goods as the goods of another person. As expressed over, the Trade Marks Act, 1999 does not define “Passing Off”. Section 134 (1) (c) refers to jurisdiction or power of the District courts to try the suit and even issue injunction in the matter relating to Passing off suits. The plaintiff has to establish his case and satisfy the court concerned the irreparable damages caused to them.

The trademark provides protection to the registered trademark, in the cases of any infringement of the trademark. While the law of Passing Off is a remedy accessible to unregistered trademark. The said remedies are governed by common law and court may pass a judgment in favour of prior user granting permanent injunction against the subsequent user of the trademark on being satisfied based on facts and circumstances of a concerned matter.

The object of the law of passing off is to secure some form of property – i.e., the goodwill of the plaintiff in the businesses, goods or services. The law of passing off gives a remedy against a false representation tending to deceive customers into accepting that the goods which the other party is selling or the services which the other party is giving are the prior party’s products or services.

Lord Diplock in case of Ervin Warnik B. V. vs. J. Townend and Sons (Hull) Ltd.distinguished certain characteristics for categorising the act of Passing-Off, which are as follows:

1.       Misrepresentation

2.       The act must be made by the defendant in the course of trade.

3.       The customers of the plaintiff’s goods or services have been a misrepresentation,

4.       Such an act of misrepresentation is calculated to injure the business or goodwill of the plaintiff, and

5.       Such an act causes actual damage to the business or goodwill of the plaintiff

Further, for the success of the case against passing-off, the plaintiff needs to pass through the Classical Trinity test, used in the case of Perry v. Truefitt and was later upheld in the landmark case of Reckitt and Colman Products Ltd. v. Bordan Incorporation. The test requires the plaintiff to prove the following three components:

1. That the plaintiff had acquired a reputation or goodwill in his goods, name or mark,
2. There was a misrepresentation, whether intentional or unintentional, which was done by the defendants by the use of mark of the plaintiff or by any other means (which incorporates use of similar marks) and which drove the customers to accept that the goods and services which were being offered by the defendants are products and services of the plaintiff or were related with the plaintiff’s goods and services,
3. That the plaintiff has suffered damage or is likely going to suffer damage because of such misrepresentation.

The Hon’ble Supreme Court of India upholds a similar view on the landmark judgement of the Laxmikant V. Patel vs. Cheetanbhai Shah. In this case, the Court upheld the presence of the following elements for the application of the law of passing off:

1. Goodwill- It needed to be established by the person seeking benefit for passing off action.
2. There must be deceptively similarity in the products or services in question.
3. The party seeking remedies for the passing off action must incur losses and damage from the act of passing off by the other party.

Thus, Passing Off constitute a very significant part in the trademark arena, especially for those proprietors who are using the unregistered trademark and has yet gained goodwill and reputation from the market and customers. Like trademark infringement, the remedy which the plaintiff can get in any suit for passing off incorporates injunction and, at the option of the plaintiff, either damages or a record of benefits, together with or without any order for the delivery up of the infringing marks for destruction or erasure.