Trademark: Passing off and Infringement in India

   

 Abstract:

This topic discusses the introduction, meaning of Trademark, provisions and concept of passing off and infringement action under the Trademarks .This topic also cover various judicial pronouncements given by Indian Courts in this reference.

Introduction:

       A trademark in relation to goods convey to the general public and specially to the consumers about the origin and quality of those goods, thereby acquiring reputation in the course of business and time. It is a visual symbol which may be word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originated from different undertaking.

        The Trademark Act of 1999, both in letter and spirit, lays down that while it encourages fair trade in every way and aims to foster and not to hamper competition, it also provide that no one, especially a trader, is justified in damaging or jeopardizing another’s business by fraud, deceit, trickery or unfair methods of any.

       The first Trademark legislation enacted in Idia in 1940, but before that, protection to trademark in the country was governed by the principles of common law bases on English cases. Registration of trademark under the Trade Mark Act of 1999 gives statutory right and slight infringement of it can invite an action for infringement

 Passing Off:

       Passing off action is based on common law principle. It is an actionable wrong, in which a person passes off his goods as the goods of another. The law of passing is preserved, nothwithstanding any apparent conflict or overlap with the provisions of the Act. The damages claimed for in the action for passing off is “un-liquidated damages”.  The action against passing off is based on the principle that “a man may not sell his own goods under the pretence that they are the goods of another man.[1] The term “passing off”  was explained in Singer Manufacturing Co. v. Loog:[2]

 No man is entitled to represent his goods as the goods of another man and no man is perimitted to use any mark. sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. Passing off is not defined in the Trademark Act, 1999.

 The concept of passing off which is a form of tort has undergone changes in the course of time. At first it was restricted to the representation of one’s goods as those of another. Later, it was extended to business and services. Subsequently, it was further extended to professions and non-trading activities. Now a days, it is applied to many forms of unfair trading and unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person or group of persons.[3]

Elements to be proved for passing off action:

In Reckitt & Colman vs. Borden[4], their Lordships used the term “classical trinity”, in a action of passing off the three elements of the tort of passing off are:

i) that  goodwill or reputation attached to the goods or to the services which the plaintiff supplied,

(ii) misrepresentation to the public by offering goods of plantiff and

(iii) the plaintiff suffer or  likely to suffer by reason of the erroneous belief  of misrepresentation by defendent.

  In Cadila Health Care Ltd. v, Cadila Pharmaceutical Limited,[5]” the Supreme Court laid down certain tests for ascertaining passing off. The Court observed that in an action for passing off on the basis of unregistered trade mark generaliy for deciding the question of deceptively similarity the following factors were to be considered:

 (i) The nature of the marks i.e, whether the marks were word marks or label marks or composite marks i.e. both words and label marks.

(ii) The degree of resembleness between the marks, phonetic similarity and idea.

 (iii) The nature of the goods in respect of which they were used as trade marks.

(iv) The similarity in the nature,character and performance of the goods of the rival traders.

 (v) The class of purchasers who were likely to buy the goods bearing the marks they required, on their education and intelligence and a degree of care they were likely to exercise in purchasing and/or using the goods.

(vi) The mode of purchasing the goods or placing orders for the goods.

Infringement of a Trade Mark

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate legal proceeding to prevent or recover damages for the infringement of a registered trademark. Infringement occurs when someone else uses a trademark that is same as or deceptively similar to registered trademark for the identical or similar goods or services as to cause confusion in the mind of the public. This right of bringing an infringement action against the defendant has been conferred by Section 28 of the Trademarks Act, 1999. Section 28 of the Act provides that the registration of a trademark gives to the proprietor of a registered trademark an exclusive right to use the trademark in relation to the goods and services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark.

What constitutes Infringement?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the

ingredients of Section 29 (1) are as follows:-

1. The plaintiff’s mark is registered.

2. The defendant’s mark is identical with, or deceptively similar to plaintiff’s registered mark;

3. The defendant has taken any essential feature of the mark or has taken the whole of the

mark and then made a few additions and alterations.

 4. The defendant’s use of the mark is in course of the trade in respect of goods/services covered by the registered trademark.

5. The use of the infringing mark must be printed or usual representation of the marking

advertisements, invoices or bills. Any oral use of the trademark is not infringement.

6. The use by the defendant is in such manner as to render the use of the mark likely to be

taken as being used as a trademark.

7. The defendant’s use of the mark is not by way of permitted user and accordingly

unauthorised infringing use.                             

Instances where the act constitute infringement of trademark :

(a)  Taking substantial feature of the mark.

(b) Addition of extraneous matter.

(c) When mark is copied and fascimile representation of it.

(d) Mark likely to cause confusion among consumer

(e) Use of reconditioned or second articles

Case Analysis On Infringement

Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.[6]

 Facts of the Case:-the plaintiff company manufactured drugs under the trade name “Calmpose”. The defendant company subsequently floated its similar product under the trademark “Calmprose”.

Held: The Hon’ble Delhi High Court held that the two trademarks having appeared phonetically and visually similar and the dimension of the two strips being practically the same including the type of packing, the colour scheme and manner of writing, it is a clear case of infringement of trade mark and the ad interim injunction granted in favour of the plaintiff.

Combined action for infringement and passing off

 Where a mark is registered, the plaintiff may combine his action for infringement along with an action for passing off, where the plaintiff has used his mark and can establish goodwill and reputation in connection with his business. This provides for a better protection of trademark.

Conclusion:-

Thus, from the above discussion it can be said that protection of trademark is important not only from the business point of view but also for the protection of consumer from fraud and imposition. However, it is beneficial if combined action for infringement and passing off is brought in one suit as incorporating a plea of infringement, if the mark gets registered can always amend the plaint. But in an action for infringement alone the plaintiff may not be allowed to include a fresh cause of passing off in order to save the action. Since the scope of passing off action is wider than an infringement action, if an action fails, there is a chance of other succeeding.. The present Act expressly recognises remedy and saves both the registered and unregistered trademarks from being misused.

References:

1. V K Ahuja : Law Relating to Intellectual Property Rights

2. Economic and Commercial Laws: The Institute of Company Secretaries of India

3. Case Material on Intellectual Property Right Law-1: Faculty of Law, University of Delhi

4. www.indiankanoon.org


[1] N.R.Dongre v.Whirpool corporation,(1996) 5 SCC 714

[2] (1880)18 Ch.D. 395.

[3] Bata India Limited v. M/S Pyare Lal & Co. AIR 1985 All. 242.

[4] (1990)RPC 341 ( HL).

[5] (2001) 5 SCC 73.

[6] AIR 1989 Delhi 44

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