An action for passing off is to restrain the defendant from passing off or selling his own products or services to the general public as that of the plaintiffs. It is an action to preserve the reputation of the plaintiff as well as to safeguard the public.
The Trade Marks act, 1999 does not define the term passing off. However, certain references are given in sections 27(2), 134(i)(c), and 135 of the Trade Marks Act, 1999. The law of passing off is based on common law and the object of the law is to protect the goodwill and reputation of a business from encroachment by dishonest competitors.
The first element is that the defendant must have sold his goods or offered his services in a manner that deceives or likely to deceive the general public in a manner that the defendants’ goods or services are the plaintiffs’ goods or services. The action is normally available to the distinctive trademark owner and the person who invents and uses it.
The second element to be established by the plaintiff is the misrepresentation done by the defendant to the general public. An intentional misrepresentation leads to an inference that the plaintiffs’ goodwill is worth to the defendant and thereby, the defendant is encashing upon it.
What has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or services of the plaintiff. Thus, the third element of a passing-off is a loss or the likelihood of confusion.
In short, no man may part off his goods as those of another. The plaintiff in action for passing off has to prove the following three elements:
Firstly, the plaintiff on basis of products or services supplied by him must establish the goodwill or reputation attached to them by associating them with the identifying ‘get up’ in the minds of the purchasing public, such get up is recognized by the public as distinctive species of the plaintiffs’ goods or services.
Secondly, the plaintiff must show that there is misrepresentation by the defendant to the public which leads or likely to lead in the minds of the people that the goods or services which the defendant offers are the goods or services of the plaintiff.
Thirdly, the plaintiff must show that he suffers, or is likely to suffer damage, due to the erroneous belief represented by the defendants; misrepresentation regarding the source of the defendants’ goods or services is the same as that of the plaintiff.
In Harrodas v. Harrodian School (1996), it was held that there are three elements of the tort for passing off which are as follows:
(1)Reputation
(2)Deception
(3)Damage.
These are also called the ‘Classical Trinity’.
In Cadila Health Care Ltd. v. Cadila Pharmaceutical (2001), the full bench of the Supreme Court held that the principles laid by the English courts cannot be applied in India in their entirety. It was held by the court that for deciding the question of deceptive similarity in a passing-off action the following facts had to be taken note of:
(1)The nature of the marks.
(2)The degree of resemblance between the marks, phonetically similar, and hence similar in India.
(3)The nature of the goods in regard to their use as a trademark.
(4)The similarity with the goods of the rival traders with respect to its nature, character, and performance.
(5)The class of purchasers who are likely to shop for the products bearing the marks they require.
(6)The mode of purchasing or placing orders for the goods.
(7)Any other surrounding relevant circumstances.
This Article Does Not Intend To Hurt The Sentiments Of Any Individual Community, Sect, Or Religion Etcetera. This Article Is Based Purely On The Authors Personal Views And Opinions In The Exercise Of The Fundamental Right Guaranteed Under Article 19(1)(A) And Other Related Laws Being Force In India, For The Time Being. Further, despite all efforts that have been made to ensure the accuracy and correctness of the information published, White Code Legal and Tax shall not be responsible for any errors caused due to human error or otherwise.
