The action for passing off is based on the concept of common law. In a passing-off action, the damages claimed are referred to as “un-liquidated damages.” The concept of passing off is based on the premise that “a man may not sell his own belongings under the pretence that they are the property of another man.” According to the court in ICC Development (International) Ltd. vs. Arvee Enterprises, “the passing off action is based on the simple principle that nobody has the right to depict his commodities as the goods of someone else.” The primacy of trademark adoption and usage is superior in a passing-off action. Passing off is a legal means of protecting or safeguarding the goodwill of an unregistered trademark.
If the owner’s trademark is registered and there is infringement, the case is one of infringement; nevertheless, if the owner’s trademark is not registered and there is infringement, the case is one of passing off. The Trademark Act of 1999 (hereinafter Act) makes no mention of passing off but sections 27 (2), 134 (1)(c), and 135 of the Act all make reference to it. Section 27 (2) indicates that the provision of the Act has no effect on any individual’s rights of action or remedies for passing off as the goods of another person. Section 134 (1) (c) pertains to the courts’ jurisdiction to hear actions for passing off arising from the use of any trademark. Section 135 outlines the remedies available for passing off resulting from the use of a trademark.
ELEMENTS OF PASSING OFF
- Goodwill: The Plaintiff must mandatorily establish goodwill or reputation associated with the goods and services that he provides in the minds of the purchasing public by association with the identifying get-up under which his specific goods and services are offered to the public as distinctive specifically of his goods or services.
- Misrepresentation: The Plaintiff must show that the defendant made a misrepresentation to the public that led or is likely to lead the public to believe that the goods or services offered by him are his goods and services. In its most basic form, the deception that gives rise to a passing-off case is an implied representation by the defendant that his commodities are the plaintiff’s goods. Because the basis of a passing-off action is a false representation made by the defendant, it must be proven as a fact in each case that the misrepresentation was made. The defendant’s the use of such a mark, name, or get-up in issue in connection with the products must depict such goods to be the goods of the plaintiff or the goods of the plaintiff of a certain class or quality; and the defendant’s use of such mark, name, or get-up is meant to deceive.
- Damage: In a quia timet action, the plaintiff must show that he received or is likely to suffer damage as a result of the defendant’s misrepresentation that the source of the defendant’s products or services is the same as the source of those offered by the plaintiff. Even if there is a possibility of fraud, the damage is implied in a passing-off action.
PASSING OFF DEFENSE
Use your own name with caution: The defendant has the right to use his name, mark, or any symbol, despite the possibility of confusion. If any uncertainty emerges that comes to the defendant’s attention, it is the defendant’s responsibility to take reasonable measures to qualify the representation in order to avoid customer confusion.
- The name, symbol, or other marks sought to be suppressed are unrelated to the plaintiff’s goods or business.
- The mark contains no indication of goodwill.
- The plaintiff has granted permission or promoted the use of the mark.
- A distinct case of passing off.
- The plaintiffs and defendant’s goods and services or businesses are wholly distinct: if both the defendant and plaintiff share the same trademark but provide completely different goods and services or businesses, they can claim passing off.
In comparison to trademark infringement, passing off legislation is complicated, and it is difficult and expensive for the plaintiff to prove the claims. The plaintiff must demonstrate that he created goodwill, misrepresentation, and loss.
PASSING OFF REMEDIES
If your passing off claim is successful, you have many options for redress are:
- file for a restraining order to prohibit the firm from utilizing your trade mark or goodwill
- request that the infringing items be destroyed
- suit for monetary damages or seek restitution for lost profits
- request an investigation to determine loss
The safeguarding of a trademark is required both for business purposes and to safeguard customers from fraud and deception. The passing-off action might be used in the case of unregistered goods and services. When opposed to trademark infringement, the scope of passing off is far broader. Unless the method and remedies for a passing off suit are the same for registered and unregistered marks, the burden of proof increases for unregistered marks because establishing goodwill and reputation is more difficult. To allow unregistered trademarks, the Act grants some relief to some users who would otherwise be unable to seek legal redress for infringement of their marks.
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