Intellectual Property Rights are the right given to a person over the creations of their minds. Intellectual Property has primarily 4 different branches- Trademarks, Patent, Copyright, and Design. Apart from these, Geographical Indications and Trade Secrets also form a part of Intellectual Property.
According to the World Intellectual Property Organization, a Trademark is “a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”, which are protected under Intellectual Property Rights.
With relation to Trademark law, passing off is an essential element of it. Passing off is a common law tort that states that an individual should not pretend to be the owner or proprietor of another individual’s goods or services. Passing off concerns unregistered trademark.
Under the law of passing off, there have been three principles laid down in the case of Reckitt & Colman Ltd V Borden Inc[1]. It was this case that laid down the foundation for the law of passing off. The three main components therein stated were- reputation, misrepresentation, and damage to goodwill, collectively known as the CLASSICAL TRINITY.
With the evolution of time, the above-mentioned principles were modified to what today is known as the modern-day principles for passing off as held by Lord Diplock in the case of Erven Warnunk V Townend[2]. They are as follows:
- Misrepresentation
- Made by a person in the course of trade
- To prospective customers of his or ultimate consumers of goods or services supplied by him.
- Which is calculated to injure the business of another trader
- Which is calculated to injure the business or goodwill of the trader by whom the action is brought
These principles together or individually, whichever adds enough leverage to the case substitute passing off. Legal professionals around the globe, deem passing off to be one of the key elements of Trademark law. One must be wondering why is that the case, well here’s why. While there is a statutory remedy for infringement of a registered trademark, passing off aids proprietors of unregistered trademarks in securing their goodwill and reputation. Section 29 of the Trade Marks Act, 1999 lays down the grounds under which a registered trademark can be infringed. Infringement of a registered mark and the relief attached to it is a statutory remedy unlike passing off. Hence, this aspect of the Trademark law is important to uphold the purpose of the Trademark law even concerning marks not registered under it.
Section 27 of the Act perceives customary law privileges of the trademark proprietor to make a move against any individual for passing of products as the merchandise of someone else or as administrations given by someone else or remedies thereof. The remedy made accessible under Section 27 of the Act secures the privileges of the owner of an unregistered trademark to enlist complaint against someone else for passing off his merchandise as products of another merchandise owner. An unregistered owner of a trademark can likewise oppose an application for registration on grounds as identified under Section 11 of the Act.
INFRINGEMENT:
Section 29 of the Trade Marks Act, 1999 talks about the circumstances under which a registered Trademark can be identified as being infringed by another proprietor of a trademark. The difference between passing off a trademark and that of a trademark infringement has been laid down by the Delhi High Court in the landmark judgment of Cadbury India Limited and Ors V Neeraj Food Products[3]. The Court opined in this case that, an action for passing a law is a common law remedy whereas that sought for an infringement is a statutory remedy. In the case of passing off, one party drives on the goodwill of the other party. Whereas, in the instance of infringement, the plaintiff is the owner of the registered trademark claims to have exclusive rights over the goods under that the disputed trademark. Prior use is an essential element in the event of infringement whereas, in the case of passing off, it is not of much relevance. The burden of proof on the defendant is more in the instance of an infringement suit in comparison to that of a passing-off suit.
The Supreme Court in a recent case of S. Syed Mohideen v. P. Sulochana Bai[4], stated that passing off right is a broader remedy than that of infringement. This is due to the reason that the passing-off doctrine operates on the general principle that no person is entitled to represent his or her business as the business of another person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act.
Concerning these two key elements, an injunction is sought as a resort. An injunction, as the name suggests, can be granted during the pendency of a suit. This would be of utmost concern to any aggrieved party because unless the court grants the injunction, the other party can continue to use the mark and this would go against the very purpose of filing a suit of infringement or passing-off thereby disrupting the goodwill and reputation of the bonafide trademark owner. This is done to safeguard the interests of the bonafide owner of the trademark by restricting the defendant from using the trademark in question till the pendency of the infringement/passing-off suit.
In conclusion, it is clear from the above discussion that passing off covers a wider spectrum as compared to infringement. Though, both are elementary principles of the law of Trademark- each has its own pros and cons. Thereby it can also be asserted that Trademark law may not differentiate a mark based on its registration status, however it is advisable to get a mark registered.
[1] (1990) 1 All.ER 873
[2] 1979 (2) AER 927
[3] 2007 (35) PTC 95 Del
[4] 2016 (66) PTC 1
SUBMISSION BY: SOHINI GOSWAMI, FINAL YEAR LAW STUDENT AMITY UNIVERSITY, KOLKATA
DUCTUS EDGE 