Law

Intellectual Property
Trademark infringement and passing off

Development Team
Role Name Affiliation

Principal Investigator Professor (Dr.) Ranbir Singh Vice Chancellor, National

Law University, Delhi
Paper Coordinator Mr. Yogesh Pai Assistant Professor of
Law, National Law
University, Delhi
Content Writer (CW) Mr. Aditya Gupta Advocate, Delhi High
Court
Content Reviewer (CR) Mr. Yogesh Pai Assistant Professor of
Law, National Law
University, Delhi
 Module Detail
Subject name Law

Paper name Intellectual Property

Module name/ Title Trademark infringement and passing off

Module Id Law/IP/#36

Pre- requisites Basic legal knowledge about intellectual property-

trademarks; conditions for registration; limitation;
defences
Objectives
1. To conceptually understand the nature of
trademark infringement

2. To specifically look into the provisions trademarks

act, 1999

3. To understand the nature of trademark

infringement through case-law jurisprudence
Key words Trademarks, infringement, similarity, likelihood of
confusion; passing-off

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 1 Introduction

The modules on trademark law that you have read so far have dealt with the subject
matter of trademark protection and the limits on the rights conferred on trademark
owners. This module will more specifically define the boundaries of the rights
conferred by trademark law – both under statute and under common law. We will
study the different tests for trademark infringement as have been identified by the
Courts over the years, the test for passing off and the practical difference between the
two.

Learning Outcome:
1. To clearly outline the concepts of trademark infringement and passing off.
2. To examine the rights conferred under the statute as well as common law.
3. To understand comprehensively the test laid down for infringement of a
trademark.
4. To evaluate the rule of anti-dissection.
5. To study comparatively what constitutes infringement and what does not
constitute infringement.

2 Rights conferred under the statute as well as common law

A well – recognized legal principle is that oncethe Parliament has codified the law in
a particular domain by statute, common law rights in that domain cease to exist. An
exception to this principle can be found in trademark law that expressly recognizes
the co-existence of common law rights and statutory rights. In this regard, reference
may be had to Section 27(2) of the Trademarks Act, 1999. As per that section, the
rights granted by the Trademarks Act do not affect the rights of action against any
person for passing of goods/ services as the goods/ services of another person. In
other words, the owner of a mark may exercise rights under two heads:

(i) Statutory rights for infringement of a registered trademark

(ii) Common law rights for passing off with respect to an unregistered mark

Therefore, even if the trademark is not registered, the owner of the mark is not
rendered remediless and can file an action for “passing off”.

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 3 Rights conferred by registration

The rights conferred by a registration are codified in Section 28 of the Act. According
to Section 28(1) of the Act, the registration of a trademark gives to the registered
proprietor of the trademark the following rights:

(i) The exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered and
(ii) The exclusive right to obtain relief in respect of infringement of
trademark.

Let’s take an example: Let’s say the company McDonalds obtains a registration
for the trademark McSwirl with respect to food items. Firstly, McDonalds gets the
exclusive right to use the trademark McSwirl with respect to food items i.e. no
other person can use the same or deceptively similar trademark with respect
tofood items. Secondly, if a person uses the trademark McSwirl for food items,
then McDonaldshas the right to file a suit for infringement and obtain relief for
infringement of trademark.

4 The test for infringement of trademark

The hallmark of a trademark infringement action is consumer confusion. A person

is said to have infringed a registered trademark if she uses a mark in the course of
trade such that it is likely to cause confusion in the minds of the consumer. The
confusion may be caused for one of the following reasons:

a. Use of a mark that is identical to the registered trade mark for goods
which are similar to the goods or services covered by such registered
trademark; or

b. Use of a mark that is similar to the registered trade mark with respect
to identical or similar goods or services covered by such registered
trade mark; or

c. Use of a mark that is identical to the registered trade mark with respect
to goods or services covered by such registered trade mark.

4.1.From whose eyes should likelihood of confusion be judged?

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 Way back in the year 1962, the Supreme Court1 clarified that the likelihood of
confusion must be judged from the eyes of an unwary consumer with average
intelligence and imperfect recollection. It is important to recognize that consumers
do remember each and every element of a trademark and do not determine the
etymological meaning of marks at the time of purchasing goods or availing
services. Thus, even if a critical comparison of the two names may disclose some
points of difference, but an unwary purchaser of average intelligence and
imperfect recollection may still be deceived by the overall similarity of the two
names since an unwary consumer is merely has a somewhat vague recollection
that he had purchased similar goods on a previous occasion with a similar name.

An interesting question that arises in this context is this:does the test of “unwary
purchaser of average intelligence and imperfect recollection” also apply to
purchasers of more expensive goods or goods that are bought after much
consideration and thought? For instance, can it be said a consumer who purchases
real estate property running into several crores of rupees will be confused by a
wrongful use of a trademark? Does such a consumer make enough enquiries to
ensure that the goods/ services originate from the rightful proprietor? Courts have
held that where the goods are expensive articles that are bought generally by
literate persons, this fact must be considered.2 Similarly, where doctors, who are
literate persons, prescribe medicines the likelihood of confusion is considered to
be lesser3.

4.2. How should trademarks be compared in a trademark infringement action?

The rules for comparison of marks in a trademark infringement action have

evolved based on an understanding on the way in which consumers interact with
trademarks. In a recent decision, the Judge culled out the following principles
regarding memory associations made by trademarks which are informative4:

i. Even when all or most brands are present at the point of choice (e.g. at
a supermarket) consumers still retrieve information from memory and
only notice specific brands, as evidenced by the short amount of time
taken to choose brands despite wide ranges on offer. Therefore the
issue of retrieval of brand name information from memory is still
relevant in that context.

1
Amritdhara Pharmacy versus Satyadeo Gupta, AIR 1963 SC 449
2
Pianotist Application, (1906) 23 RPC 774 at 777
3
Cadila Healthcare Limited versus Cadila Pharmaceuticals Limited, (2001)5 SCC 73
4
M/s South India Beverages Pvt. Ltd. versus General Mills Marketing Inc. & Anr., decision
dated September 11, 2014 passed by the Hon’ble High Court of Delhi in FAO(OS) 389/2014

5
 ii. The brand itself is not a memory target but a cue that might facilitate
recall or reference of previously learned brand associations. A
paramount factor influencing a consumer’s choice of brand is his
memory of previous exposures of the brand.

iii. Distinctive brand names and packaging are highly conducive to mental
associations and serve as pathways to facilitate a much more accurate
recall by a consumer. It enables finer retrieval of the experience.

iv. Studies reveal that extrinsic brand cues might actually enhance the
memorability of prior experiences with specific brands, thereby
facilitating accurate quality discrimination and improving consumer
welfare. Thus, the development of such brand value in the form of a
mark containing names, patterns, etc. which would often be a direct
reflection of an enterprise’s goodwill and market reputation was
accorded protection in the form of their registration as trademark.

v. A similar mark causes a slow decline in the accuracy of a consumer’s

memory-based judgments and therefore, the Trademarks Act seeks to
put a check on such practises. It also assumes significance that the
learning process of a consumer is the result of a consumption
experience thattakes place over a period of time (and is thus
“sequential”) as opposed to “simultaneous”. There may be vast spells
between consumption that may naturally give impetus to confusion.

vi. Confusion of very satisfactory consumption experiences with less

satisfying experience may lead to a reduction in repeated purchase and
dilution of brand equity.

Based on this understanding of memory associations with trademarks, the

following rules have emerged from case law regarding the method of
comparison of the marks in trademark infringement actions:

1) Side by side comparison is inappropriate: The test of comparison of the

marks side by side is not a sound one. This is because a purchaser seldom
has the two marks side by side before him when he makes a purchase. The
eye and the mind is not an accurate recorder of visual detail and marks are
remembered by general impression or by some significant detail rather

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 than by any photographic recollection of the whole 5 . Simply put,
meticulous comparison is not the correct way6.

2) Visual and phonetic similarity between the two marks must be seen:
The following oft – quoted passage from an old English case on overall
visual and phonetic similarity is instructive:

You must take the two words. You must Judge them, both by
their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact
you must consider all the surrounding circumstances and you
must further consider what is likely to happen if each of those
trademarks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.”7

3) Expansion of the test to similarity of ideas: In the early years of the

development of Indian trademark law, the focus was on the visual,
structural and phonetic similarity of the two trademarks. Over the years,
as Courts have better understood the way in which consumers interact
with trademarks, the test has expanded to similarity in the idea of the two
trademarks. This expansion is owing to the recognition of the fact that
while a side – by – side comparison of the two marks may reveal many
visual or phonetic differences, the ideas that the two marks convey may be
the same and a consumer cannot be expected to recall the exact visual or
phonetic details while consuming goods. An oft – cited example of is that
of a mark represented as a football game. Another mark may show the
players in a different dress and in different positions and may thus convey
the same impression/ idea of a football game leading to consumer
confusion.8In other words, the first impression conveyed by a mark is the
correct test9.

5
Walter Bushnell Pvt. Ltd. And Ors. versus Miracle Life Sciences and Anr., decision by the
Hon’ble High Court of Delhi dated May 26, 2014 in CS(OS) No.220/2013
6
United Biotech Pvt. Ltd. vs Orchid Chemicals & Pharmaceuticals Ltd., (2012) 5 PTC 433
(DB)
7
(1906) 23 R. P. C. 774, 777
8
Barker’s case(1885) 53 LT 23cf Kerly’s Law of Trademarks and Tradenames, Thomson
Sweet and Maxwell (14th ed.)
9
United Biotech Pvt. Ltd. vs Orchid Chemicals & Pharmaceuticals Ltd., (2012) 5 PTC 433
(DB)

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 4) The rule of anti – dissection: A composite mark is one that has both
distinctive parts (over which the trademark owner has rights) and non –
distinctive parts (which are not exclusive to the trademark owner since
they are common to the trade or descriptive etc.). The anti – dissection
rule mandates that the Courts whilst dealing with cases of trademark
infringement involving composite marks, must consider the composite
marks in their entirety as an indivisible whole rather than truncating or
dissecting them into its component parts and make comparison with the
corresponding parts of a rival mark to determine the likelihood of
confusion10.

5) Copying of essential features is relevant: The Defendant must have

copied the essential features of the Plaintiff’s registered trademark.

6) No amount of added matter can be considered:In an infringement

action, once the Defendant uses the mark as a source indicator, no amount
of added matter intended to show the true origin of the goods can affect
the conclusion of infringement11. Thus, Courts have rejected the argument
that addition of a distinctive prefix or suffix or differences in packaging
by the Defendant will be sufficient to dispel consumer confusion12. One of
the reasons given for this position is that even where such “added matter”
is included, consumers can be still led to believe that the Defendant is
associated with the Plaintiff or is in some way sponsored by the Plaintiff
even if the added matter makes it clear that they are not the same entity.
This association between the Plaintiff and Defendants is considered as a
sufficient injury to constitute trademark infringement.

A few examples of trademarks that have been held to be confusingly similar

are as under:

i. AMRITDHARA and LAKSHMANDHARA13

ii. GLUCOVITA and GLUVITA14
iii. RASMOLA and HAJMOLA15
iv. SPOXIN and SUPAXIN16

10
M/s South India Beverages Pvt. Ltd. versus General Mills Marketing Inc. & Anr., decision
dated September 11, 2014 passed by the Hon’ble High Court of Delhi in FAO(OS) 389/2014
11
Ruston & Hornsby Ltd versus The Zamindara Engineering Co., AIR 1970 SC1649
12
Laxmikant V. Patel versus Chetanbhat Shah & Anr., 2002 (24) PTC 1 (SC)
13
Amritdhara Pharmacy versus Satyadeo Gupta, AIR 1963 SC 449
14
Corn Products Refining Co. versus Shangrila Food Products Ltd., AIR 1960 SC 142
15
Shri Pankaj Goel versus Dabur India Ltd., 2008 (38) PTC 49 (Del)(DB)

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 v. COLLECTOR’S CHOICE and OFFICER’S CHOICE17
vi. ZEGNA (pronounced as ZENYA) and JENYA18
vii. HAAGEN DAAZ AND D’DAAZS19
viii. RYSTA and ARISTOC20

A few examples of trademarks that have been held not to be confusingly

similar are as under:

i. OFFICER’S FAVOURITE and OFFICER’S CHOICE21

ii. PIQUANT and PICOT22
iii. PRIMASPORT and PRIMARK23
iv. TEMOGET and TEMOKEM24

4.3.Other considerations while determining trademark infringement

4.3.1. The class of consumers

In a trademark infringement action, the identity or similarity of the class of

consumers may also be a relevant consideration for determining the likelihood
of confusion. It is often argued that if the class of consumers of the Plaintiffs’
goods/ services is completely different from the class of consumers of the
Defendants’ goods/ services, there is no likelihood of confusion and thus no
trademark infringement. While this argument has been successful in a few
cases, Courts are increasingly giving less weightage to this difference in class of
consumers caused by a difference in the price of the goods of the parties. For
instance, in a recent case25 involving the trademark HAAGEN DAAZ for ice
creams, the Defendants who were using the mark D’DAAZS argued that the

16
Medley Laboratories Pvt. Ltd. and Anr. versus Alkem Laboratories Ltd., 2002 (25) PTC 593
(Bom.)(DB)
17
M/s Allied Blenders & Distillers Pvt. Ltd. versus Shree Nath Heritage Liquor Pvt. Ltd.,
order dated July 1, 2014 passed by the High Court of Delhi in CS(OS) 2589 of 2013
18
Consitex SA versus Kamini Jain and Ors., order dated July 18, 2011 passed by the High
Court of Delhi in CS(OS) No. 629 of 2011
19
M/s South India Beverages Pvt. Ltd. versus General Mills Marketing Inc. & Anr., decision
dated September 11, 2014 passed by the Hon’ble High Court of Delhi in FAO(OS) 389/2014
20
Aristoc versus Rysta, (1945) 62 RPC 65 (HL)
21
BDA Breweries and Distilleries Ltd. versu Sree Durga Distillery, 2002 (25) PTC 704
22
Picot versus Goya, [1967] RPC 573
23
Primasport TM application, 1992 FSR 515
24
Schering Corporation & Ors. versus Alkem Laboratories Ltd., 2010 (42) PTC 772
(Del.)(DB)
25
M/s South India Beverages Pvt. Ltd. versus General Mills Marketing Inc. & Anr., decision
dated September 11, 2014 passed by the Hon’ble High Court of Delhi in FAO(OS) 389/2014

9
 price of their ice creams for much lesser than that of the Plaintiffs and thus there
is no likelihood of confusion. The Court held that since the consumers of the ice
– creams were little children who would be confused by the Defendants’ use of
a deceptively similar trademark notwithstanding the difference in the price of
the goods. This position of law has even been adopted with respect to real estate
products and hotels, wherein Courts have cited the possibility of booking hotels
online as reason enough for confusion to occur irrespective of the difference in
price between the Plaintiff’s and Defendants’ services26.

4.3.2. Actual confusion or deception need not be proven

It is not necessary for the plaintiff to adduce evidence of actual deception in

order to prove the case of infringement and the mere likelihood of confusion is
required to be shown. However, where instances of actual confusion do exist,
they can add significant strength to a Plaintiff’s case to not only show likelihood
of confusion but also that the reputation associate with the Plaintiff’s
trademarks.

Further, where the marks are identical and are used with respect to identical
goods or services, likelihood of confusion is presumed.

4.4.What kinds of uses of the mark can be considered as infringement?

As you will notice from the module on the limitations of a trademark, certain
kinds of uses of a trademark such as descriptive uses are not considered to be
infringement of a trademark. The Act also specifies the different kinds of uses
that are considered “use of the registered trademark” so as to amount to
trademark infringement. The following acts constitute use of the trademark:

1) Use of the trademark as a trade name or part of a trade name or as the

name of a business concern
2) Affixation of the trademark to the goods or the packaging thereof;
3) Offering or exposing goods for sale puts them on the market, or
stocking them for those purposes or offering or supplying services
under the registered trade mark:
4) Importing or exporting goods under the mark; or
5) Using the mark on business papers or in advertising;

4.5. Use which denudes distinctiveness

26
Aman Resorts Limited v. Mr. Deepak Narula and Anr., 2011 (45) PTC 329 (Del).

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Section 29(4) of the Act also recognizes that a trademark may be infringed even
where the Defendants’ goods are not covered by the Plaintiff’s registration, provided
that the registered trade mark has a reputation in India and the use ofthe mark without
due cause takes unfair advantage of or is detrimental to, the distinctive characteror
repute of the registered trade mark. You will study more about this concept in the
module relating to well – known trademarks.

5 The law relating to passing off

As explained above, an owner of a mark can also exercise common law rights in a
trademark. A person is said to impinge on another’s common law rights in a mark if
the former passes off his goods and services as originating from the latter. The law
relating to this tort – “passing off”- was succinctly explained by the Supreme Court in
the case of Laxmikant V. Patel vs. Chetanbhat Shah and Another27, and an oft – cited
passage of the case is extracted hereunder under:

“A person may sell his goods or deliver his services such as in case of a profession
under a trading name or style. With the lapse of time such business or services
associated with a person acquire a reputation or goodwill which becomes a property
which is protected by courts. A competitor initiating sale of goods or services in the
same name or by imitating that name results in injury to the business of one who has
the property in that name. The law does not permit any one to carry on his business in
such a way as would persuade the customers or clients in[to] believing that the goods
or services belonging to someone else are his or are associated therewith.

It does not matter whether the latter person does so fraudulently or otherwise. The
reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies
in the world of business. Secondly, when a person adopts or intends to adopt a name
in connection with his business or services which already belongs to someone else it
results in confusion and has propensity of diverting the customers and clients of
someone else to himself and thereby resulting in injury.”

The Supreme Court went on to explain the rationale behind the legal doctrine:

“The legal and economic basis of this tort is to provide protection for the right of
property which exists not in a particular name, mark or style but in an established
business, commercial or professional reputation or goodwill. So to sell merchandise
or carry on business under such a name, mark, description, or otherwise in such a

27
(2002) 3 SCC 65

11
manner as to mislead the public into believing that the merchandise or business is
that of another person is a wrong actionable at the suit of that other person. This
form of injury is commonly, though awkwardly, termed that of passing off ones goods
or business as the goods or business of another and is the most important example of
the wrong of injurious falsehood. The gist of the conception of passing off is that the
goods are in effect telling a falsehood about themselves, are saying something about
themselves which is calculated to mislead. The law on this matter is designed to
protect traders against that form of unfair competition which consists in acquiring for
oneself, by means of false or misleading devices, the benefit of the reputation already
achieved by rival traders.”

5.1 The elements of a passing off action

In a landmark decision regarding the infringing use of a trademark as a domain name,

the Supreme Court in the case of Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd.
held that the tort of passing off has the following three elements:

1. Firstly, the Plaintiff must establish distinctiveness/ reputation in the

trademark. The action of passing off is normally available to the owner of a
distinctive trademark and the person who, if the word or name is an invented
one, invents and uses it. If two trade rivals claim to have individually invented
the same mark, then the trader who is able to establish prior user will succeed.
It is not essential for the plaintiff to prove long user to establish reputation in a
passing off action. It would depend upon the volume of sales and extent of
advertisement.

2. The second element is misrepresentation. A plaintiff in a passing off action

must prove misrepresentation by the defendant to the public. The word
misrepresentation does not mean that the plaintiff has to prove any malafide
intention on the part of the defendant. Ofcourse, if the misrepresentation is
intentional, it might lead to an inference that the reputation of the plaintiff is
such that it is worth the defendant's while to cash in on it. An innocent
misrepresentation would be relevant only on the question of the ultimate relief
that would be granted to plaintiff. What has to be established is the likelihood
of confusion in the minds of the public, that the goods or services offered by
the defendant are the goods or the services of the plaintiff. In assessing the
likelihood of such confusion the courts must allow for the "imperfect
recollection of a person of ordinary memory”

3. The third element of a passing off action is lossor damage by the

misrepresentation or the likelihood of it.

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5.2 Deceptive similarity in a passing off action

The Supreme Court in the landmark case of Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited28 identified the following factors as relevant for deciding the
question of deceptive similarity:

a) The nature of the marks i.e. whether the marks are word marks or label marks
or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and
hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the
rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks
they require, on their education and intelligence and a degree of care they are
likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.

The Supreme Court further clarified that the weightage to be given to each of the
aforesaid factors depends upon facts of each case and the same weightage cannot be
given to each factor in every case.

6 Difference between passing off and infringement

A crucial difference between an infringement and a passing off action is that in an

infringement action, the Plaintiff need not establish any goodwill or reputation in the
trademark. In an infringement action, so long as the Defendant commenced use of the
mark subsequent to the Plaintiff’s registration of the mark, the Plaintiff may restrain
the Defendant from using the mark irrespective of whether the trademark has been
used by the Plaintiff or whether the Plaintiff has garnered reputation or goodwill
under the mark.

Another important difference between an infringement and a passing off action is that
“added matter” or surrounding circumstances such as differences in packaging, get –
up and layout and trade dress may be relevant in a passing off action but these

28
(2001)5 SCC 73

13
considerations are irrelevant in an action for infringement as has been explained
hereinabove.

Points to Remember

1. Trademark law expressly recognizes the co-existence of common law rights and
statutory rights.
2. Registration confers the exclusive right to the use of the trade mark in relation to
the goods or services in respect of which the trade mark is registered and the
exclusive right to obtain relief in respect of infringement of trademark.
3. Visual and phonetic similarity between the two marks is an appropriate way to
compare the two marks.
4. A mark is said to be deceptively similar if its application to goods or services is
likely to cause confusion, that the goods originate from the registered trademark
proprietor.
5. The rule of anti – dissection: A composite mark is one that has both distinctive
parts and non-distinctive parts.
6. It is not necessary for the plaintiff to adduce evidence of actual deception in
order to prove the case of infringement and the mere likelihood of confusion is
required to be shown.
7. Section 29(4) of the Act also recognizes that a trademark may be infringed even
where the Defendants’ goods are not covered by the Plaintiff’s registration,
provided that the registered trade mark has a reputation in India .
8. Laxmikant V. Patel vs. Chetanbhat Shah and Another.
9. Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd.

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Self-check Exercises

 What kinds of uses of the mark can be considered as infringement?

 Explain the common law principle of passing-off with the help of decided case laws.
 Elucidate the principle of deceptive similarity enshrined in the doctrine of passing off.

 Explain the test laid down for determining infringement of trademark ?

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