This article is written by MS SHAHEEN HIRANI ,a 4th year student of Keshav Memorial College Of Law.
As the rapid modernisation and technical development taking place, several issues where even the intellectual properties are not well protected and are misused and the creators rights are infringed, where it can also be considered as ‘identity theft’ just like with trademarks. Therefore under the concept of trademark a very common yet important topic under the name of PASSING OFF is inscribed. Let’s first try to understand what does trademarks actually stands for and how it is violated.
TRADEMARK
Trademark means a mark capable of being represented graphically and also helps in distinguishing the goods or services one from another. As industrial revolution began mass production in Europe the need for trademark law were felt. Thus in France a very first enactment relating to trademarks was constituted.
In India, The Trademark Act 1999 along with the formulation of Trademark rules 2002 governs the law relating to Trademarks. It was formulated to provide registration and protection of trademarks for goods and services and also to prevent fraudulent use of it. As trademark works for the security of the inventor and invention its very obvious that something fraudulent happenings occurring to it and therefore that can be termed as Passing Off.
PASSING OFF
It is when an unregistered trademark attempts to pass itself as registered trademark in respect of goods and services of registered trademark. Precisely it is occurred when an unregistered trademark is used by a person who is not the owner of such trademark in relation to goods and services to owner of trademark. Several keynotes can be considered with regard to passing off og trademark for the better interpretation of the concept and thus it can be categorised as;
.No man can represent his goods as being the goods of others.
.No false representation to be made.
The legal connotation of ‘passing off’ is nowhere found under the trademark act 1940 but is found in section 27(2) , section 134(1)(c ), section135(3)(c ).
Passing off is said to be a kind unfair competition when a person through deception, attempts to obtain a financial benefit from the creation of others. Such action can be called as action of deceit.
We often tend to get confused between the infringement of trademark with passing off of trademark, as it looks quite similar and also relates to some misuse with respect of trademark. Actually they are two separate heads and are different from one another under the entire vast concept of trademarks. Infringement of trademark is dependent upon the validity of the registration and various other restrictions laid. On the other hand passing off relates to unlawful representation of others goods as ones own. A case regarding to passing off can be explained below helping us in better understanding the demarcation between the above two mentioned heads-
PAM PHARMACEUTICALS VS RICHARDSON VICKS INC
In this case both the plaintiff and defendant were the manufacturers of medical products. The plaintiff is a MNC incorporated in United States. This MNC has been manufacturing cough drops named (VICKS) for a very long-time. Similar to the cough drops made by the plaintiff, the defendant started manufacturing cough drops under the name of (VICAS) very similar to the former one. Not just the product but it was also written in same format and choosing almost similar representation. A suit was filed at the court as ‘deceptive similarity’. Therefore the trial court justly protected the plaintiff interest by issuing an injunction as prayed by them.
REMEDIES
Such trademarks which are registered are considered as action for infringement and statutory remedies are provided. Such trademarks which are not registered are said as passing off and the remedies are provided under the common law.
Passing off of trademark provides injunction as remedies which is mentioned in the trademark act 1999 under section 135 as injunctive relief to plaintiff, as the following;
1.Anton piller order
2.Mareva Injunction
3.Interlocutory Injunction
4.Perpetual Injunction
5.Infringing goods to be destroyed
6.Sue for damages
.ANTON PILLER ORDER – this are prior partial powers given to the plaintiff to inspect the defendant premises. The court may order plaintiff to do this if there are chances that the defendant might destroy or get rid of all the matters or substance containing the trademarks of the plaintiff.
.MAREVA INJUNCTION- in this the court has power to freeze the assets of defendant, property of defendant can be disapproved or cancelled and if any judgement granted against his will cannot be granted.
.INTERLOCUTORY INJUNCTION- it is one of the most commonly used action against the defendant . An order called as interlocutor prohibition which prevents the defendant from continuous usage of trademark which is leading to infringing of unregistered trademark.
.PERPETUAL INJUNCTION- this injunction prevents the defendant completely for all time from doing such violating acts of the owner of trademark. It is usually granted when cases are almost ending or when cases are about to settled.
.INFRINGING GOODS TO BE DESTROYED- a order of search & seizure is given by the court that prohibits defendant from delivering its products and goods. Also the court can return and destroy all such goods.
.SUE FOR DAMAGES- damages are compensation for loss, this are usually recovered by the owner of trademark from the defendant. It includes all the monetary values of loss and also the loss to the reputation of the products.
Few case laws relating to passing off are
.NEW ZEALAND MILK BRANDS LTD VS SANOWARA DAIRY INDUSTRIES LTD 2010
In this case the High Court stated that the only test applied when court considered a case under section 10, is to test of identify and resemblance. Even if applicant establish a user, and respondent couldn’t establish a user and if there was resemblance between marks of applicant and respondent likelihood of deception and respondent registered it first the applicant application cannot be registered.
.BRITANNIA INDUSTRIES LTD VS ITC LTD 2017
In this case the respondent filed a civil suit against the appellant of infringement of copyright trade dress of respondent ‘Sunfeast farmalite’. It was related to colour combination and not character indistinctiveness. The court felt that no examination is required and thus dismissed the case as their was no passing off of trademark.
The above case law is mentioned to show that what actually constitutes as passing off, as not every little aspect or indifference will lead to its misuse as it features mainly on indistinctiveness of characteristics.
As trademark is necessary for the Intellectual property, its protection is also required in vast plants, businesses ,start ups to avoid and curb from any kind of fraud or cheating. Not just the registered trademarks are given such protection but the ones which are unregistered are equally given due protection under the passing off. The scope, subject matter, and necessity of passing off is greater than that of infringing of trademarks. Therefore the process of passing off remedies is similar in both registered and unregistered trademarks but the burden of proof becomes larger in unregistered trademark as it gets difficult to establish goodwill and reputation. Hence the remedies are provided to make sure that the reputation and the goodwill of the owner is not affected. Although it’s a lengthy and time-consuming process but it will therefore ensure benefit of protection and security.
REFERENCES
1.ipleaders.com
2.vakilsearch.com
3.G.B.REDDY- laws on intellectual property rights
4.V.K.AHUJA- laws relating to intellectual property laws
5.counsellaw.com
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