ClassicalTrinity of Passing Off
In the market place we often come across products which are pretty much identical to other products we already use in our daily life. So, there lies a possible apprehension of identical product as the one we already use in daily life; which in turn might lead customers in taking an imperfect purchasing decision. The packaging of the product might be such which create a considerable amount of confusion in the mind of consumers. The likelihood of confusion in the minds of prudent customers regarding the origin of product or the services would be enough to establish an infringement of trademark. The trademark must be registered in order to file an infringement suit.
So, now a couple of questions might strike our mind i.e. – “Whether every product or services we come across is a registered trademark? If not, then what will happen in case someone deceitfully uses a trademark of another which is not registered? Whether unregistered trademark can be protected in India? Whether any remedy is available to owner of unregistered trademark?”
Well, as the above questions are rushing in our mind, we first need to understand that the Indian trademark Act i.e., the Trade Marks Act, 1999 do not provide any statutory safeguard measures to the unregistered mark. Section 27 of The Trade Marks Act, 1999 recognizes the unregistered mark and states a passing off action may be taken up if one person falsely represents his/her goods and services as those of another person. Though it is not compulsory to get the mark registered but it always suggested getting it registered to protect it from possible chance of infringement. Basically, in everyday life we come across different products and services some of them might be even very popular among purchasers but the same might not be necessarily a registered trademark.
As we all are pretty well aware that India is common law country so it follows not only codified law but also recognizes common law principles. Passing off is common law tort which is utilized to enforce unregistered trademark rights. The passing off protects the interest of those owners whose trademark is not registered. In simple words passing off is when one individual passes off his goods and services under pretence of another.
Singer Manufacturing Co. vs. Loog
The term passing off is explained – no one is permitted to render his/her goods and services under pretence of another person. No one is even allowed to use mark, symbol, logo which will ultimately double-cross the end consumer.
Erven Warnik B.V Vs J.Townend & Sons (Hull) Ltd
The 5 essential characteristics of the Passing off are discussed:
- Made in the course of business
- To the ultimate customers of goods and services offered by him
- Which will hamper the goodwill and reputation of another person
- An actual damage is caused to person who has filed the suit for causing injury to his goodwill and reputation of business.
Cadila Health Care Ltd. Vs Cadila pharmaceutical Limited
If any of the above 5 essentials is missing prima facie then a passing off suit can’t be maintained.
HONDA Motors Co. Ltd Vs Charanjit Singh & Ors
The mark HONDA was used by plaintiff in automobile business and defendant started using the mark Honda for selling pressure cookers. A passing off suit has brought by the plaintiff against the defendant for misrepresenting his mark which is causing damage to the goodwill in the market. The suit was allowed by the court as the use of mark was creating confusion in the minds of people.
DIFFERENCE BETWEEN INFRINGMENT AND PASSING OFF:
The first and foremost difference between the two is that – suit for infringement can be filed when trademark is registered and passing off suit when the mark is unregistered as well in registered mark. The concept of the two is very different but dimension focused in both the suit is nearly the same. So, we can say that the scope of passing off is broader than infringement as passing off action is based on the common principle that no one can portray his/her products as that of another person.
Durga Dutt Vs Navaratna Laboratories
In case of infringement the actual use of the mark by defendant is a must but in action for passing off the actual use of mark by the defendant is not necessary.
In case of infringemen,t the defendant cannot escape the liability whereas on other hand in case of passing off defendant may escape from his liability if the goods are adequately distinguished from that of the plaintiff.
The burden of proof lies on the shoulder of the plaintiff to make out that mark which is used by the defendant is likely to mislead the consumers.
TRINITY OF PASSING OFF:
Reckitt and Colman products Ltd Vs Borden INC
To enforce a suit for passing off the plaintiff must confirm the 3 basic things a laid down by the House of Lords as classical trinity:
- In the mind of general consumers identifying the plaintiff’s get up of the products or services offered by him carry a considerable amount of goodwill and reputation with it.
- The goods and services offered by the defendant were represented to common public under the pretence of the plaintiff, which created confusion in the minds of common people.
- The misrepresentation of goods and services offered by defendant damaged the goodwill of the plaintiff which made him suffer losses.
GOODWILL IN A MARK:
Goodwill of the mark is of paramount interest for a suit for passing off. The get up, packaging, label, etc. are vital ingredient of goodwill. The earlier stated statement brings us to the question what goodwill mean and how get up of a product is related to goodwill.
Goodwill is nothing but the alluring power that acquires the custom. It is, essentially, the capacity of a specific brand to convince clients to buy products or services by distinguishing them as sourcing from a specific person. The way that buyers realize that a specific brand distinguishes certain goods or services as produce from a specific business, isn’t adequate except if there has really been apparent business in such products and services.
The attire of products or services frequently implies how the products or services are marked. Goodwill establishment in regard to shape of goods is quite a hectic task because the main object of the trademark is to signify the source, the shape and get up of an item are not typically picked for such a reason. In the market scenario a product which is similar to another product does not mean they come from same source.
To have the option to set up goodwill in terms of shape of an item, the plaintiff should demonstrate that the shape of a product has come to signify a specific source to the pertinent public and that the general population depend on the shape of the products as showing that the source of the products is the plaintiff.
The conditions of goodwill in each case will vary, however frequently the essential goodwill can be set up by showing proof of marketing projections, publicizing spent for the items, press inclusion, grants, site pages or online media references. In the event where the material isn’t adequate, at that point overview or witness proof regarding the connection made by purchasers between the ‘get up’ of the items and the petitioner will likewise be valuable.
The activity of passing off would lie where a genuine chance of the harm to reputation in a business happens. Henceforth the plaintiff needs to establish goodwill in his produces directly linked with defendant’s trading activity. It need not be set up in the psyches of every single individual from the general public but should be in mind of considerable segment of it.
The second component is to exhibit that a misrepresentation has occurred which leads or is probably going to lead people in general to accept that products or services under the pretence of plaintiff. Considerable amount of harm has been endured because of the deceit; which will probably be going to be conceivable to set up a questionable passing off case.
It is essential that the deception should misdirect purchasers with regards to the identity of the products, not just confound them.
To bring a suit for passing off, purchasers should accept the produces to be those of the plaintiff or made by it, instead of only puzzling over the situation. Consequently, if a purchaser requests a kind of item without indicating the brand he might be befuddled regarding the source of the item, but he has not been tricked into getting it. In such a circumstance deception has had no influence in his buy and there can be no passing off. Then again, if the consumer requests a particular marked item but is sold something different without acknowledging it, then he tricked into buying it.
Passing off suit can be set up despite the fact that the vast majority are not misled.
Last but not the least damage caused to plaintiff because of the misrepresentation by the defendant must be established by the plaintiff.
The first and most clear occasion is the place where the plaintiff has lost deals because of the defendant’s deception. Simultaneously damage might happen because of weakening to the plaintiff’s goodwill, such as, because of the substandard quality of the defendant’s produce.
IS INTENTION TO DEFRAUD NECESSARY FOR PASSING OFF?
The intention to misrepresent fraudulently is not vital in bringing a suit for passing off. So basically, it doesn’t matter whether passing off is done innocently or deceitfully.
Passing off can be regarded as a truly adaptable right which can be utilized to secure goodwill and reputation in a wide scope of circumstances. The unique adaptability feature makes it unimaginably appealing to applicants.