Drawing a thin line between Passing off and Infringement: An important aspect in The Indian trademark law.

In our Daily life we see more than 100 brands in our day but how can we distinguished them is they are registered or not .This question arrises in many of us, Is this brand Really belong to that company or not so to solve this problem we got the right of trademark registration. Registering a mark provide several benefits to the Brand owner, In Modern World consumers do not know the manufacture personally but before when there were less brands and manufacturing units everyone knew them personally so to finish this gap in modern time between manufacture and customer trademark has been introduced.

Introduction

Trademark represent your business, goods and services as well as distinguish them from others, It is an essential tools for your brand indication and protection, Trademark is an intellectual property that has been defined in Section 2 (zb) of the Trademark Act,1999 that gives protection to any word, phrase, design, color, logo, shape of goods etc. The primary function of trademark is to glance out from other brands of same category providing same goods and services. Trademark help to protect a brands identity and reputation in the market. Trademark protect the brand from competitor copying your brand no one can use your brand name without authority or permission from the owner of the brand. Trademark can be registered or unregistered if it is registered then a brand owner can take legal action against the person who infringe, but if it is unregistered brand owner can use the “passing off” remedy against the person who violate it.

What is registered and unregistered trademark? Registered Trademark

Registered Trademark is a symbol, word or combination that has been officially registered with the government. It provide absolute right to the owner of the brand registered. Registration of a mark provide legal protection to the registered owner of the brands and no one can claim damages from that person who is using his mark or cannot approach the approach the judiciary for infringement. Registered mark can be legally registered under chapter III trademark Act 1999. Registered trademark guards the goodwill of a trader and

even protect the public to buy low quality goods and services .Trademark can be registered under “section 18” of the trademark act.

Section 18 “ Any person claiming to be the proprietor of a trademark mark used by him, who is desirous of registering it, shall apply in writing to the registrar in the prescribed manner for the registration of his trade mark”

The Online trademark registration is valid for 10 years from a period of 10 year and renewal request can be filled before the trademark office one year prior to the expiry of the registration.

Unregistered Trademark

Unregistered trademark is a trademark that is not registered under the trademark Act 1990 and it does not have remedy against infringement. It does not get much protection and cannot stop any other to use brand. An unregistered trademark does not get much security and legal protection as compare to the registered trademark.

[Image Sources: Shutterstock]

Passing Trademark

For example If a person is a trader in a area from a long time and have good reputation, goodwill in that geographical area but he does not register his trademark due to ignorance of Intellectual property rights. and someone from other state also using his brand for selling products so it is difficult for him to prove that this trademark belong to him and there may be conflict who is the real owner of this brand. So In this condition “Passing off” principle has been used by the court to justify who will be the real owner of the brand. Passing off is based on the principle off “The action against passing off is based on the principle which says that “a man may not sell his own goods under the pretense that they are the goods of another man”.

What is Passing off?

Passing off action is not defined in trademark act 1999 but it has been referred to in the Act under Section 27. This provide right to the person for passing off goods as goods of another person but him. If a person sells his goods as goods of others then the brand owner can take action as this become the case of passing off.

It is used to protect or safeguard the goodwill attached to any unregistered trademark trader. The principle of passing off: i.e. Nobody has right to represent his goods as the goods of somebody else in Perry vs truefit..

In passing off principle we see three elements that is goodwill, Misrepresentation and damages. These thing taken into consideration.

Goodwill

It was defined in the case of Tergo Vs hunt, The personality of the owner the nature and character of business it name and reputation.

Misrepresentation

Misrepresentation can be noted to have taken place whenever the defendant takes or tries to make the public believe that the goods and services that is providing are of the plaintiff.

Damages

Damages that the person suffered from the other person that uses his/her brand for benefit.

Infringement of Trademark

 The Trademarks Act, 1999 (hereinafter referred to as the Act) is the legislation that protects trademarks in India. The Act lays down the rules dealing with registration, protection and penalties against infringement regarding trademarks. Trademarks are given the status of intellectual property across the globe. There are many organisations, both international and national, that endeavour to protect intellectual properties such as trademarks.

In India, the organisation that deals with the protection of trademarks are the Indian Patent Office administered by the Controller General of Patents, Designs and Trademarks. In simple words, trademark infringement is the unauthorised usage of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that when an average consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services.

Case laws

Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors, CS (COMM) 1007/2018

In 2001, Starbucks, in India, registered their trademark with a word-mark pronounced as STARBUC”KS along with a logo visualising “crowned maiden with long hair”. Whereas, the defendant, being a local vendor, initiated his business in 2015, with a name called “Sardarbuksh Coffee & Co”. Slowly and steadily the defendant earned fame and as a result, in May 2018, the defendants formed a private limited company with the name “Sardar buksh Private Limited”.

The court observed that the name used by the defendant was, to a large extent, confusing. As a consequence, the court ordered the defendant to change the name of its outlet to “Sardarji-Bakhsh Coffee and Co.” from “Sardarbuksh Coffee & Co”. However, the court provided a privilege to the defendant that if any other third party, in future, uses the word mark “Bakhsh” the defendant can sue them for the same. Now, the defendant operates with the name uttered as “Sardarji-Bakhsh Coffee and Co”.

Differences between Infringement and Passing off

S.

No.

 

Infringement

 

Passing off

 

1.

Type of remedy It is statutory remedy under Section 29(1) of the Trade mark Act, 1999 It is Common-Law remedy.
2. Registration It is a pre-requisite It is not required
 

 

 

3.

 

 

 

Proof

 

 

Plaintiff is only required to show deceptive similarity, as there is a presumption of confusion.

Apart from proving deceptive similarity, the Plaintiff is also required to prove confusion in public and the likelihood of injury to the plaintiff’s goodwill.
4.  Jurisdiction  The registered proprietor or registered user of the trade mark can institute the suit where they actually and voluntarily resides or carries his business or personally work for gain.  Section 20 of the Civil Procedure Code, 1908 would apply

Conclusion

The Law of Passing-off and infringement is very important for the reputation and goodwill of one’s business. If any person finds that his trademark registered or unregistered is being misused he/she can directly approach the court. A registered trademark is the property of the company. Also, it directly associates with Goodwill, reputation and quality of products. No one can use the same trademark which is in use by other companies. In the same way, passing off arises when it injures the Goodwill of one’s business when there is misrepresentation and thirdly in the damages. The remedy provided in both the cases that are in the case of passing off and infringement is generally the same.

Author: Pratham Arora, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010