Passing Off
Trademark plays a very significant role for both trade and commerce. In order for your brand to be recognised and to gain more popularity, trademarking the product/service goes a long way. It also increases your product value in the market.
Trademark which are registered are protected under the Trademarks Act, 1999. Trademarks are protected regardless if they are registered or not registered. If any person tries to use a trademark which is not registered, it will come under passing off.
The law of passing off basically prevents one person from misrepresenting his goods or services of that of another. Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off is used to safeguard or protect the reputation and goodwill attached to an unregistered trademark. When any trademark which is registered by the owner and any kind of infringement happens, then it becomes a suit for trademark infringement. On the other hand, if the trademark is not registered by the owner and infringement happens in such case it becomes a case of Passing off. The Passing off of Trademark is not a statutory remedy instead it is a common law remedy.
The principle of Passing off was laid down for the first time in the case of Perry v Truefitt, the principle of passing off was that no one has the right to represent his goods as the goods of someone else. The law of passing off have changed so much over the period of time. Earlier, the law of passing off was very narrow but with time it has expanded and now the law is applicable to various forms of unfair competition, and unfair trade wherein the activities of one person harms the goodwill associated with the activities of another person or group of persons.
Section 27(2) of the Trademarks Act, define Passing off as, ‘Nothing in this act shall deem 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’. The basic question while determining passing off is, whether the defendant’s conduct is such as to mislead the public to believe that the defendant’s business is the plaintiff’s or to cause confusion between the business activities of the two. The tort of passing off is sufficiently wide to give relief to charities engaged in trading type activities.
In British Diabetic Association v Diabetic Society, both the parties were charitable society, their names were deceptively similar and the words ‘Association’ and ‘Society’ were too close since they were similar in derivation and meaning and were not wholly dissimilar in form and hence, permanent injunction was granted.
The court look into three important elements while determining passing off: The reputation, misrepresentation and the damage to goodwill, which was established in the case of Reckitt & Colman Ltd v Borden Inc.
The above concept of passing off can be explained with the help of few case laws –
Honda Motors Co. Ltd v Charanjit Singh & others, it was held that the use of the mark ‘Honda’ by the defendants could not be said to be an honest adoption. Its usage by the defendant is likely to cause confusions in the minds of the public.
In the case of Khemraj v Garg, the defendant had copied the get up, layout, colour scheme etc. and the name ‘manavpanchang, Mani ram panchang and ‘shri vallab Mani Ram panchang’ of the plaintiff’s panchang. Hence, the court held that it similar to the plaintiff’s product and interim injunction was granted.
In the recent case of S. Syed Mohideen v P. SulochanaBai, the Apex Court of the country stated that passing off is a wider remedy than that of infringement. This is because the doctrine of passing off operates on the general principle that no present is entitled to represent his or her business as the business of another person. The said action of deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act.
In another case of Bata India Ltd v Pyare Lal & Co, the plaintiff brought a passing off action against the defendant company for using their registered trademark “Bata” (for shoes, etc) as “Batafoam” (for mattresses, cushions, etc). Thus, the major issue in this case was whether it is necessary for a passing off action that there is some resemblance in the nature of goods produced by the two traders.
In support of their contentions, learned counsel for the defendants cited various reasons. In Thomas Bear & Sons v Prayag Narain, held that there can obviously be no monopoly in the use of the trademark. In Banga Watch Co. v N.V. Philips, it was held that for a passing off action, goods of plaintiff and of defendant should be of alike or similar nature and not of a totally different character.
The court contended that the name ‘Bata’ is so very well known in the market that its use on any product gives an impression to the purchaser of average intelligence that it is an item produced by the Bata company. And thus, the plaintiff has a cause of action for instituting a proceeding for passing off.
In recent times, the cases for passing off has risen over time and it has become increasingly important for the owners to protect their business by registering and to be vigilant and keep their eyes and ears open in whatever they do.
Conclusion: Thus, from the above discussion it is understood that passing off is applied in case of unregistered goods and services. The action of passing off arises when there is injury of claimant’s goodwill, misrepresentation of facts related to goods and services and damage to the trade. Section 27(2) of the Trademark Act, 1999 has given statutory protection for passing off action and generally treated as Common Law Tort.