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: KRITIKA SINGH, 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.

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