What is the difference between Passing off and Infringement of Trademark?

What is the difference between Passing off and Infringement of Trademark?

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Meaning of Passing off

According to Duhaime’s law dictionary, Passing Off is “making some false representation likely to induce a person to believe that the goods or services are those of another.”(1)

In simple language, passing off means when a trader/business person /or some other person make false representation to his/her customer or consumer, to make him/her believe that the goods or services he/she is providing is of another person.

To avoid this kind of practice, Law of Passing-Off was passed which is covered under Intellectual Property Rights in India. The law of passing off is provided under Section 134 1 (c) of Trademark Act 1999. (2) And Section 27 of the Trademark Act 1999 provides a common law remedy. It is a common-law tort which is used for unregistered trademark rights ( a trademark which has not been registered under trademark or patent office is known as an unregistered trademark).

The law of passing off prevents one person from disguising his goods or services as that of another person.

In the beginning, the concept of passing off was not very broad, it has gone under many changes since time. At first, the law of passing off was related to goods only. That one person cannot misrepresent goods as those of others.

At later stages with goods, business and services were also considered under this. Subsequently passing off was extended to professions and non-trading activities.

In today’s time, it is also applied to unfair trading and unfair competition in which one person’s activity causes damage to the Goodwill of another person or group of people.

The basic question which arises in the law of passing off is whether the person’s conduct is to mislead the public or to cause confusion between two business activities.

Elements of Passing-Off

There are three main elements of Passing-Off which were stated in the famous case law of Reckitt & Colman Ltd. v/s Borden Inc. by the house of lords, which are as follow

  • Reputation
  • Misrepresentation
  • Damage

In the above case law, it was stated that a plaintiff must establish

  1. Goodwill or reputation attached to his/ her goods or services
  2. He/she should prove that a misrepresentation is done by the defendant.
  3. He should prove that he/she has suffered a loss due to the defendant’s misrepresentation.

Modern elements of Passing-Off

  • Misrepresentation
  • Made by a person in the course of trade
  • To prospective customers of his or her ultimate consumers of goods or services supplied by him or her
  • To injure the Goodwill of another person’s business
  • Causes actual damage to the plaintiff’s business Goodwill

The modern elements of passing off can be explained better with the case-law of Honda Motors Co. Ltd v/s Charanjit Singh and others. (3)

Facts of the case:

In this particular case, Plaintiff was using the trademark ‘HONDA’ for his automobile and power equipment business, while on the other hand, the defendant was using the same trademark of ‘HONDA’ for his pressure cooker business. Looking at this plaintiff filed a case against the defendant.

Held in the case:

In this case, it was held that the use of trademark ‘ HONDA’ by the defendant causes confusion in the minds of people and hence liable for the law of passing off.

There are many cases related to passing off in India, some of which are:

  • Mahendra and Mahendra Paper Mills v/s Mahindra and Mahindra Ltd on 9 November 2001
  • Itc Ltd v/s Godfrey Philips India Ltd on 7 December 2010.

When does Passing Off arise?

The action of passing off arises when there are misrepresentation and harm to the Plaintiff’s existing Goodwill.

What should be established by the Plaintiff in a Passing Off action?

In a Passing off action, the plaintiff must prove that the trademark he/she is using for their business has a distinct identity for his/her product and if someone uses the same thing, it will create confusion in the minds of people and will cause harm to his/her business reputation.

Meaning of trademark and trademark Infringement

According to the Trademark Act 1999, Section 2 (1) (ZB) ” trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.”

Trademark is nothing but a logo, symbol, design, phrase, picture or something else which distinguishes one product from another similar kind of product.

Trademark Infringement is when a person makes unauthorized use of a trademark or service mark. As stated above the law of passing off is for unregistered trademark whereas trademark infringement is for the registered trademarks.

Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person uses the same trademark which is registered by another company or person and creates confusion in the minds of people, it will be liable for the trademark infringement.

One of the trademark infringement case:

  • Apple Corps v/s Apple Inc. :

It is a long-run battle between the two major companies and one of the famous case law for trademark infringement. In this case, the Beatles found the Apple Corps music before Steve Jobs used the same word for his company. Steve Jobs was sued by the Beatles and later he agreed not to enter the music company by paying compensation. But the case again arose when Apple Inc. launched iTunes, again the suit was filed and the case was resolved when Steve Jobs agreed to purchase the trademark rights from Apple Corps.

Difference between Passing Off and trademark infringement. 

  1. Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services. This is one of the most important differences between Passing Off and trademark infringement. But the point to be noted here is that the remedy provided in both Passing Off and trademark infringement is the same.
  2. The other difference between Passing Off and trademark infringement is that in Passing off it is not essential for the defendant to use the trademark of the plaintiff to bring an action of passing off but in trademark infringement, it is not the case.
  3. In the case of trademark infringement, the burden of proof lies on the plaintiff.
  4. Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
  5. For trademark infringement prosecution under criminal remedy is quite easy as compared in the case of Passing off.
  6. For the case of Passing off, the remedy has to be sought under Section 20 of Civil procedure code 1908, whereas trademark infringement suits can be solved under Section 134 of the Trademarks Act 1999.
  7. For trademark infringement registration is essential whereas for passing off Goodwill, damage, misrepresentation is essential.

There are two famous cases for the difference between trademark infringement and passing off which are stated below:

The distinction between these two was stated by judge Clauson in the case of Listen LTD. v/s Harley. (4) In this case, he opined that if you are restraining the infringement of a registered mark, you can restraint the man from using the mark, but if you restraint him from selling the article under the same label word which plaintiff or other person has been using without differentiating it from the Plaintiff’s good, then it is a different thing.

Another case is S. Syed Mohideen v. P. Sulochana Bai. (5) In this case, both the appellant and respondent were the registered owner of ‘Irrutukadai Halwa’ but the respondent proved in the Supreme Court that it is not just about the use of trademark but it has become a household name for her family as they have been selling this halwa since the 1990s and have a different reputation to which court said that as it has become the Goodwill of respondent thus no one can use this particular trademark and it was also observed that passing off right is a broader remedy than trademark.

Conclusion

The Law of Passing-off and trademark 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 known as the property of the company and is directly associated with the Goodwill, reputation and quality of products. No one can use the same trademark which is used 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.

Sources:

  1. Duhaime, Lloyd, the legal definition of passing off
  2. Indian Trademark Act,1999
  3. JUDGMENT Sharda Aggarwal, on 28 November 2002
  4. (1929) 4 RPC 11 (2)
  5. 2016 (66) PTC 1

Aarushi Agarwal - ILS Law College

Arushi Agrawal

Author

Arushi hails from ILS Law College, Pune and she spends most of her time researching on new topics, art and craft, painting. Her Interest area lies in criminal and family law. For any clarifications, feedback, and advice, you can reach her at agrawalarushi463@gmail.com

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