ChannelCon or Channel Icon? Passing off in trademark
It isn’t necessary to register a trademark for business, but it is advisable to register them so that some other company doesn’t use them for their benefit. The Trademark Act, 1999 gives protection/ right to registered as well as unregistered trademarks.
What is Infringement or Passing off?
Before we move further, let us know what an infringement is and what passing off is. In simple words, trademark infringement means when someone else uses a registered trademark. Trademark passing off means when someone misuses an unregistered trademark. In both circumstances, the person misusing the trademark will be liable for it.
Also read: Classical Trinity Of Passing Off
The “ChannelCon or Channel Icon” problem: –
The Economics Times was conducting the conference using the ChannelCon or Channel Icon. The plaintiff company has an overseas registered trademark used for arranging and conducting business conferences and trade shows. They do not have a registered trademark in India. The company is seeking an ex-parte ad interim injunction order against the defendants for passing off its services using the mark ‘ChannelCon’ or ‘ChannelIcon.’
The defendant allegedly uses the deceptively similar trademarks to host conferences relating to aspects involving information technology and allied subjects.
Considering this, the court also directed some instructions relating to the conference:
- They should display ‘ChannelIcon’ as two separate words, ‘Channel’ and ‘Icon.’
- The words ‘Economic Times’ and ‘ChannelIcon’ should be displayed in equal lettering sizes for viewers to know that the Economic Times is hosting the conference.
- Displaying a disclaimer is mandatory.
- These directions must comply with all other social media handles and mention that it has nothing to do with ‘CompTia’ ‘ChannelCon.’
As the mark in question is not a registered mark in India, the plaintiff company filed the suit for passing off. As this was an urgent matter, the company had to file for an ex parte injunction order so that the defendants could not use the mark and benefit from it.
Read the order here
The Computing Technology Industry Association, INC D/B/A Comptia v/s Benett Coleman and Company Limited D/B/A The Times Group and Anr.
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
© ZEST IP