According to the Trademark Act 1999, a trademark denotes a mark qualified for representing a brand. It is a logo, emblem, formatting, term, image or something, which differentiates one product from another similar product.
The concept of passing off has undergone various changes during the passage of time. Originally, it was restricted to the representation of one person’s goods as those of another. Later it was extended to business and services. Subsequently, it extended to professions and non-trading activities. Today 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.
The principle of passing off, i.e. “Nobody has the right to represent his goods as the goods of somebody else” was decided in the case of Perry v Truefitt in 1842. Passing off is when a person sells his goods as the goods of another especially by creating some false representation that is likely to lead someone to believe that the goods or services are those of someone else. Section 27 of the Trademark Act, 1999 provides this remedy to protect or safeguard the goodwill attached to an unregistered trademark.
Proving Passing off is little difficult as claimants need to demonstrate that at least some of the public is at risk of confusion between the two businesses. The most important is whether the conduct of the defendants is such as to confuse the public that the business of the defendants is a plaintiff or a cause of confusion between the business activities of the two. This question arises when there are false claims and harm to the existing reputation or goodwill of the owner.
Elements of Passing Off:
The three basic elements of passing off was established in the case of Reckitt & Colman Ltd v Borden Inc. these are-
- Misrepresentation– Where the defendant takes or tries to make the public believe that the goods and services which he is providing are of the plaintiff.
- Goodwill/Reputation– It must be proved that the person or the goods and services own some kind of reputation in public.
- Damage/ Deterioration– the offended party must prove that it has suffered an actual or reasonable loss of business due to the alleged misrepresentation.
Prohibitory actions by Plaintiff:
The plaintiff to prohibit the damage to his trademark can ask for injunction. The injunction is an effective remedy in the prevention Infringement of registered trademark or unregistered trademark. Section 135 of the Trademark Act, 1999 provides injunctive relief. An injunction can of various types depending upon the facts and circumstances of a particular case such as interim injunction, Anton Piller injunction, Mareva injunction, Interlocutory Injunction, perpetual injunction, etc.
How Passing Off is different from Infringement:
The concept of Passing off trademark is distinctive from that of trademark infringement as, Passing off is shield for unregistered products and services, whereas trademark infringement happens where the trademark is registered.
Further, in case of trademark infringement the burden of proof lies on the user, whereas in Passing Off the plaintiff has the burden to prove that there is confusion, misrepresentation, reputation and damage to the trademark. Registration is important for trademark infringement, whereas for passing off, reputation, damage and misrepresentation is vital.
The conclusion that can be drawn here is that, the protection of the trademark is necessary to protect your business especially when the trademark is unregistered. Therefore, Passing-Off action was established and incorporated to protect the rights of such entrepreneurs.
The Trademark Act, 1999
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