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Passing Off of Trademarks

The document discusses the concept of passing off under trademark law. Passing off involves one party misrepresenting their goods or services as being produced by another party. It outlines key principles such as no need for intent to deceive and priority of adoption being important. It also discusses factors considered in passing off cases such as similarity of marks, goods/services, and likelihood of confusion.

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43 views3 pages

Passing Off of Trademarks

The document discusses the concept of passing off under trademark law. Passing off involves one party misrepresenting their goods or services as being produced by another party. It outlines key principles such as no need for intent to deceive and priority of adoption being important. It also discusses factors considered in passing off cases such as similarity of marks, goods/services, and likelihood of confusion.

Uploaded by

POOJALASHMI V M 0099
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
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Passing Off of Trademarks:

Passing off action is based on common law principle. The damages claimed
for in an action for passing off is “un-liquidated damages”. 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.”
Similar view has been held in ICC Development (International) Ltd. vs.
Arvee Enterprises that “the passing off action depends upon the simple
principle that nobody has any right to represent his good as the goods of
somebody else”. In a passing off action, the priority in adoption and use of
trade mark is superior. Passing off is not defined in the Trademark Act,
1999. It is referred to in Section 27 (2), 134 (1)(c) and 135 of the Act.

Section 27 (2) states that the rights of action against any person for passing
off as the goods of another person or the remedies in respect thereof are
unaffected by the provision of the Act. Section 134 (1) (c) refers to
jurisdiction of courts to try suits for passing off arising out of the use of any
trademark. Section one 135 specifies the remedies available in respect of
passing off arising from the use of a trademark.

Passing off cases are often cases of “deliberate and intentional


misrepresentation, but it is well settled that fraud is not a necessary element
of the right of action and the absence of the intention to deceive is not a
defence in an action for passing off though proof of fraudulent intention may
materially assist a plaintiff in establishing probability of deception.”

The concept of passing off which is a form of tort has undergone changes in
the course of time. At first it was restricted to the representation of one’s
goods as those of another. Later, it was extended to business and services.
Subsequently, it was further extended to professions and non-trading
activities. Now a days, it is applied to many forms of unfair trading and
unfair competition where the activities of one person cause damage or injury
to the goodwill associated with the activities of another person or group of
persons.

The law of passing off applies whenever there is the prospect of confusion
between marks and getup or where there is the prospect of confusion of
identity through the unauthorised use of similar marks or get-up. It is
because the main consideration of passing off is whether deception or
confusion is likely to arise, passing off can be used to protect any kind of
distinctive name, mark, logo or get-up used to identify a company or
business as well as products or services.

Factors to be considered in case of an action for passing off:-

The Hon’ble Supreme Court in Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd.19, held that the following factors to be considered in
case of an action for passing off action of an unregistered trademark for
deciding the question of deceptive similarity:-

1. The nature of the marks, i.e, whether the marks are word marks or label
marks or composite marks, i.e, both words or label works.

2. The degree of resemblance between the marks, phonetically similar and


hence similar in idea.

3. The nature of goods in respect of which they are used as trademarks.

4. The similarity in nature, character and performance of goods of the rival


traders.

5. The class of purchasers who are likely to buy the goods bearing the marks
they are likely to exercise in purchasing and/or using the goods.

6. The mode of purchasing the goods or placing orders for the goods.

Infringement of a TradeMark

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be
entitled to initiate legal proceeding to prevent or recover damages for the
infringement of a registered trademark. Infringement occurs when someone
else uses a trademark that is same as or deceptively similar to registered
trademark for the identical or similar goods or services as to cause confusion
in the mind of the public. This right of bringing an infringement action
against the defendant has been conferred by Section 28 of the Trademarks
Act, 1999. Section 28 of the Act provides that the registration of a
trademark gives to the proprietor of a registered trademark an exclusive
right to use the trademark in relation to the goods and services in respect of
which the trademark is registered and to obtain relief in respect of
infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of


confusion, deceptive marks, identical marks and dilution of marks. Likelihood
of confusion occurs in situations where consumers are likely to be confused
or mislead about marks being used by two parties. The plaintiff must show
that because of the similar marks, many consumers are likely to be confused
or mislead about the source of the products that bear these marks. Dilution
is a trade mark law concept forbidding the use of a famous trade mark in a
way that would lessen its uniqueness. In most cases, trade mark dilution
involves an unauthorized use of another’s trade mark on products that do
not compete with, and have little connection with, those of the trade mark
owner. For example, a famous trade mark used by one company to refer to
hair care products, might be diluted if another company began using a
similar mark to refer to breakfast cereals or spark plugs.

What constitutes Infringement?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this


context, the ingredients of Section 29 (1) are as follows:-

1. The plaintiff’s mark is registered.

2. The defendant’s mark is identical with, or deceptively similar to plaintiff’s


registered mark;

3. The defendant has taken any essential feature of the mark or has taken
the whole of the mark and then made a few additions and alterations.

4. The defendant’s use of the mark is in course of the trade in respect of


goods/services covered by the registered trademark.

5. The use of the infringing mark must be printed or usual representation of


the marking advertisements, invoices or bills. Any oral use of the trademark
is not infringement.

6. The use by the defendant is in such manner as to render the use of the
mark likely to be taken as being used as a trademark.

7. The defendant’s use of the mark is not by way of permitted user and
accordingly unauthorised infringing use.

While the above is the general proposition of law as per Section 29 (1), the
various circumstances in which the trademark is infringed are enumerated in
sub-sections 29(2) to (9) of Section 29.

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