“TRADEMARKS AND PASSING OFF – A CRITIC”

Navaneet kumar 1

Introduction

Intellectual Property is the most imperative component of the modern business. It is a

combination of copyright, trademark, design, Geographical indication, patent, industrial
design etc which are consider as valuable assets of any company. Intellectual Property can
create healthy competition in the market; consequently the manufacturer and traders can
develop their products more effectively.
A trademark includes any word, name, symbol, or device, or any combination, used, or
intended to be used, in commerce to identify and distinguish the goods of one manufacturer
or seller from goods manufactured or sold by others, and to indicate the source of the goods.
In short, a trademark is a brand name. Trademark is a mark or symbol which is capable of
distinguishing the goods or services of one from those of others.2
India enacted the Trademarks Act 1999 and the Trademarks Rules 2002 3 to ensure adequate
protection for domestic and international brand owners, in compliance with the TRIPs
Agreement. The act states that a trademark includes the shape of goods, their packaging and
colour combinations. Further, the Trademarks Act gives protection to well-known trademarks
and provides for the registration of convention applications, for which the priority deadline is
six months. The term of a trademark has been increased to 10 years, renewable upon
expiration.
As a measure to protect international proprietors, the Trademarks Act has defined a „well-
known mark‟4. Further, the Trademarks Act5 has increased the grounds on which trademark
infringement can be claimed, such as likelihood of uncertainty, likelihood of dilution or
disparagement of a registered trademark, comparative advertising and spoken use. The term
„use‟ has been expanded for the purpose of ascertaining infringement. If a trademark is not

1
Student of Rajiv Gandhi National University of Law
2
Ahuja . V.K., Lexis Nexis Student Series , Law Relating to Intellectual Property Rights, ButterWorths
Wadhawa, Nagpur, page no. 225
3
Effective from September 15, 2003
4
As a mark well known to a substantial segment of the public using such goods or receiving such services
5
The Trademarks Act, 1999
registered in India, a foreign trademark owner can initiate a passing-off action against the
potential infringer.
The Trademarks Act provides statutory protection to well-known trademarks, which were
protected under the common law. The Trademarks Act defines a „well-known trademark‟6
and during determining whether a trademark is well known, the registrar should consider any
relevant facts, including the following:-
 The knowledge or recognition of the alleged well-known mark in the relevant section
of the public, including knowledge obtained as a result of promotion of the trademark;
 The duration, extent and geographical area of any use of that trademark;
 The duration, extent and geographical area of any promotion of the trademark,
including advertising or publicity and presentation at fairs or exhibition;
 The duration and geographical area of any registration or any publication for
registration of that trademark, to the extent that it reflects the use or recognition of the
trademark;
 The record of successful enforcement and the extent to which any court or registrar
has recognised the trademark as well known (Section 11(6) of the Trademarks Act).

These criteria are not comprehensive, but are suggestive and illustrative guidelines to assist
the registrar in determining cases. The decision will depend upon the facts and circumstances
of each case. Based on the foregoing, it will be the responsibility of a trademark owner to
prove that the mark is well known.
One way to prove this would be by demonstrating the degree of knowledge or recognition of
the mark in the relevant section of the public using consumer surveys or opinion polls. In
addition, awareness of a trademark in India can be proved by promotion of the mark through
advertising in print and electronic media.

6
Section 2(1) of the Trademarks Act defines as the Well-known trademark‟, in relation to any goods orservices,
means a mark which has become so well known to the substantial segment of the public which uses such goods
or receives such services that the use of such mark in relation to other goods or services would be likely to be
taken as indicating a connection in the course of trade or rendering of services between those goods or services
and a person using the mark in relation to the first mentioned goods or services. Furthermore, this definition
should be read in conjunction with Sections 11(6) to 11(10) of the Trademarks Act, which specify the relevant
factors to be considered by the registrar of trademarks when determining whether a particular mark is well
known.
Elements of Passing Off

To come under the preview of passing off, there are three elements, often referred to as the
Classic Trinity, in the tort which must be fulfilled7:-

1. Goodwill owned by a trader

2. Misrepresentation
3. Damage to goodwill

Plaintiffs have the burden of proving goodwill in its goods or services, get-up of goods,
brand, mark and/or itself per se.

The Plaintiff also has the burden of proof to show false representation (intentional or
otherwise) to the public to have them believe that goods or services of Defendant are that of
the Plaintiff, thus, there must be some connection between Plaintiff‟s and Defendant‟s goods
or services or trade.8 They must show likelihood and or actual deception or confusion in the
public. Deception or confusion, however, does not consider a „moron in a hurry‟.9 It is the
Court's duty to decide similarity of the marks the criterion of which often fall under three
elements:-

1. Oral & Visual

2. Conceptual similarity (often applied in trademarks infringement cases).

In relation to the element of damage to goodwill, there may be loss or diversion of trade or
dilution of goodwill. The Plaintiff need not prove actual or special damage; real and tangible
probability of damage is sufficient. This damage should however be reasonably foreseeable.
It is insufficient to simply show likelihood/actual deception and/or confusion.10

Ultimately, the Court must use common sense in determining the case, based on evidence and
judicial discretion, and not witnesses. It should be noted that disclaimers may be insufficient
to avoid passing-off or cause of action.11

7
Lord Oliver reduced the guidlines laid out by Lord Fraser in Erwen Warnick B. V vs. J Townend & Sons
(Hull) Ltd [1979] AC 731, 742 (HL) [Advocaat] to the three items in Reckitt and Colman Products [1990])
8
http://en.wikipedia.org/wiki/Passing_off, visited on 14th November, 2009
9
See Morning Star Cooperative Society v Express Newspapers Limited [1979] and Newsweek Inc. v. British
Broadcasting Corp., [1979] R.P.C. 441 by Lord Denning.
10
Supra note. 51
11
See Asprey and Garrard v. WRA (Guns) Ltd [2002] FSR 30.
Critical Analyses of Passing Off

In India, as the Intellectual property owners continue to face the problems of fake and
infringements of their brand trademarks, the emerging trend amongst exploitation appears to
be adopting well known marks as a part of their trading style or corporate name. Obviously,
the intention is to choose a name that is easy to recollect and gives the impression of being
associated with a well-known company. More often than not, in order to claim honesty in
adoption, the marks are adopted in relation to a different business as that of the Intellectual
property holder. Also it is common among exploitation to slightly twist the name or add a
descriptive suffix or prefix to the well-known mark.
According to Indian trademark law 1999 the provision is not so clear about this situation, the
laws are also not clear about the fact and it has conflicting effects on the subject matters. In
case of passing off for unregistered and registered trademarks the basic rules related to
subject matter of the incident. In case of Cadilla Health Care Ltd case the apex court
enumerated the general factors that are to be considered in deciding a passing off case while
pointing out that the weightage is to be given to the factors depending upon facts and
circumstances of each case. So the decision of case is deferent with case to case. In first
instance the passing off is a common law remedy depend upon the case laws but infringement
is deals with the proper statutory law and in second instance passing off is applicable for both
registered and unregistered trademarks so it create complication and complicity.

The problems in passing off law in India:-

i. Unnecessary litigation on passing off
ii. Law off passing off not enforce but statutory provision
iii. It depend upon circumstances so it differ from case to case (it based upon case law)
iv. Over riding effect on criminal remedies
v. The provisions for passing off and registered trademark infringement over lapping
each other

The cases related to passing off, trademark and copyright violation shadow the Indian
litigation scenario today more than ever before. As corporations and companies increasingly
value their intellectual property, the spite amongst rivals seems to be on the rise. In such an
event, it is necessary that the Courts witness and adopt a rationale that creates a balance
between sensitive particulars and pronouncements, while administering justice. The court
give the basic request for the passing off in the case of Cadila Health Care Ltd v Cadila
Pharmaceuticals Ltd12 at page 80 where five characteristics of passing off were identified but
the case are filed without the merit. The main reason regarding this problem is that the lack of
statutory provision for passing off.
The law of passing off is not enforced by statutory law so it is based upon the cases to cases.
The misrepresentation and evil intention, both are the main requisite for passing off and it is
also as main requisite for criminal remedy under the trademark law section 103.13 So passing
off overriding effect on criminal remedies. In case of Le Chemise Lacoste vs. R.H. Garments
& Others. Or Coolways India v. Princo Air conditioning and refrigeration 14 , the requisite
are same as the criminal remedy for the plaintiff but the decision off the court is based upon
the passing off and not according with the section 103 of trademarks act, 1958. With the past
IT boom, famous marks in the IT industry such as INTEL, PENTIUM, INFOSIS, DELL, and
YAHOO, REDIFF, MAHINDARA, TATA etc. have become victims in the hands of the
copy cats.
In such cases, as the marks are being misused in the form of trade names. Therefore, the
pressure is on brand owners to prove goodwill and reputation of their mark or corporate name
to establish a case for confusion and deception in the course of trade. In this procedure the
expend lots of money for trail in the courts. So in present condition the decision on passing
off create confusion for the trademarks holders. In an action for Passing Off under the law of
trademarks, it is essential to prove that the consumer is misled into believing that the
impugned goods are the goods of or are connected with the goods of a prior user of the
trademark. When this is not proved, the prior user cannot enforce a passing off action against
the new user, even if the goods in relation to which the trademark is used fall in the same
class.15
The question that a number of IP holders are asking is why these companies are allowed to be
registered in the first place. In case of companies seeking registration with the Registrar of
companies, although only such company names are approved that are not identical with
companies already registered. However, the search system is not full proof. Therefore, a
misuse can overcome the objection by adding a prefix or suffix or by adopting a similar

12
(2001) 5 SCC 73
13
Supra note . 46
14
1993 PTC (Suppl) (1) 470 (Del.)
15
This was the view taken by the Delhi High Court in the case of M/s Microlube India Ltd. v. Maggon Auto
Centre and Another, decided on 7th February 2008 (1 IA.Nos. 11702/2007 and 12433/2007 in CS (OS)
2015/2007. Sited on http://www.mondaq.com/article.asp?articleid=57888)
name/mark as opposed to identical mark. Thus, it is common for infringers to obtain
clearance for a company name containing a well-known trademark.
Instead of those above problem the courts has also dual nature and give dissenting judgement
related to passing off.
Descriptive and distinctive criteria is one of the main factor through which the Passing off
determine and this difference obtained through the true test. For determining whether a
particular name or phrase is descriptive word or not than it is in determining whether it is
commonly used to describe the thing intended.
In Kala Niketan v. Kala Niketan16 it was held that the word „Kala’ or „Kala Niketan’ is not
descriptive of qualities or characteristics of sarees. In Oertli v. Bowmen17 it was held that
where the alleged representation consists of the use of a name in connection with the goods,
the name should have become distinctive of the Plaintiff‟s goods. But the goodwill or
reputation for the trademark can be created even without the goods being offered for sale; and
such goodwill is entitled to protection.18 The time required for creating goodwill or reputation
would be six weeks, three weeks or goodwill can be created even before the product is
launched in this case the popularity and well know characters are not in the surface so it I has
big problem for finding the goods or reputation is popular or not. In Amritdhara Pharmacy v.
Satya Dev Gupta,19 the Supreme Court held: “what degree of resemblance is necessary to
deceive or cause confusion must be, in the nature of things, incapable of definition a priori”
so it become confusing.
In other stage the deceptiveness resemblance also has two important issues are:
1. The persons whom the resemblance is likely to deceive or confuse,20
2. The rules of comparison to be adopted in judging whether such resemblance exists
as to confusion or due to imperfect recollection.”
In the instant case, the Plaintiff and Defendant are aiming towards the identical class of
customers with similar sounding names the Defendant is likely to deceive and cause
confusion in the unwary consumers minds.21 The basis for an action for passing off is the
principle that a man is not to sell his own goods under the pretence that they are the goods of
another man.22 In Reckitt & Colman Products Ltd. v. Borden,23 the Court enunciated the

16
AIR 1983 Del 161 at 165.
17
(1959) RPC 1 at 4 (HL), as per Lord Simonds.
18
BBC v Talbot [1981] FSR 228 at 233.
19
AIR 1963 SC 449.
20
Cadila HealthCare Ltd v Cadila Pharmaceutical Ltd 2001 PTC 541
21
Kirit Kumar Girdharlal Doshi v Wimco Ltd 1998 (18) PTC 459.
22
Perry v. Truefitt, (1842) 6 Beav 66, 73 cited in, Narayanan, P., Law of Trade Marks and Passing Off 497
„Classical Trinity‟ test for determining passing off, which requires that the plaintiff establish
the essentials elements24. In an action for passing off on the basis of unregistered trademark
generally for deciding the question of deceptive similarity the essential factors 25 are to be
considered. In addition to the aforementioned considerations the court must also take into
account the manner in which marks are to be compared, the marks have to be considered as
whole. It is not right to take a part of word and compare with another part of the other mark.26
But in another case the court held that Common words can be used in combination with other
words and do not amount to civil action for passing off. 27 In Kwik Kopy TM28 the registration
was refused on the sole ground that Kwik Kopy is phonetically equivalent to the descriptive
words 'quick copy' and it is not distinctive.
A descriptive mark, per se, does not easily qualify for protection under trade mark law. 29 A
trader cannot monopolize a mere description.30 A „descriptive mark‟ is defined as a name
which either describes an ingredient of the product, its intended purpose, function or use,
quality, size, the class of users, a desirable characteristic of the product, or the end effect of
the mark upon the user.31 In order to succeed in an action for passing off, the plaintiff must
show that the defendant has appropriated something which is sufficiently distinctive of his
product. This becomes an onerous burden to discharge because of the inherent contradiction
in proving distinctiveness in a description.32 In case of Descriptive Marks, minor
dissimilarities are sufficient to distinguish between marks.

(2000). See also N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714; National Garments, Kaloor v.
National Apparels, AIR 1990 Ker 119; Ranjit Singh v. Jaswant Singh, AIR 1975 P&H 121; Bata India Ltd.
v. Pyare Lal & Co., AIR 1985 All 242; Manish Vij and Ors. v. Indra Chugh and Ors., AIR 2002 Del 243.
23
[1990] RPC 341
24
1.Goodwill or reputation in the mind of the purchasing public;2. Misrepresentation by the defendant
deceiving or likely to deceive the public in to believing that the product in question is that of the plaintiff; 3.
Damage or likelihood of damage to the plaintiff‟s goodwill as a result of the defendant‟s actions.
25
1.The nature of the marks i.e. whether the marks are word marks or label marks. 2.The degree of resemblance
between the mark, phonetically similar and hence similar in idea; 3 The nature of good in respect of which
they are used as trademarks; 4 The class of purchasers who are likely to buy the goods bearing the marks
they require, on their education, and intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods; 5 The mode of purchasing the goods or placing orders for the goods.
26
Sunny Pharmaceuticals v Lupin Laboratories Ltd 2000 PTC 283; see also Kerly's Law of Trade Marks and
Trade Names, 12th edn, p 407.
27
Aviat Chemicals v Intas Pharmaceuticals Ltd (2001) PTC 601 (del).
28
Kwik Kopy TM (1982) RPC 102.
29
See generally Section.9(1), Trademark Act, 1999.
30
Equity Access v. Westpac, [1989] IPR 431.
31
Section. 9 (1) (b), Trademark Act, 1999. See also SBL Ltd. v. Himalaya Drug Co., (1997) PTC 17 (DB);
Girnal Food & Beverages Pvt. Limited v. Godfrey Phillips India Limited, (2001) PTC 360 (Del).
32
Bharat Enterprises v. C. Lal Gopi Industrial Enterprises, AIR 1999 P&H 231; Cipla v. Prasanna Ratan, AIR
1950 All 258; Equity Access v. Westpac, [1989] 16 IPR. 431; Sant Kumar v. Ram Lalchan, (1999) PTC 307
(207)
In Office Cleaning Services Ltd. v. Office Cleaners Association33, the court observed that in
considering descriptive marks, even slight differences between the marks would serve to
differentiate the two - as the differences, however small would be sufficient to avert
confusion. If the two products are marketed and distributed through the same channels, it is
obvious that there will be deleterious impact on a plaintiff‟s goodwill, and chance of
deception of the consumer. The comparison must be taken from the general and even casual
point of view of a consumer, as a whole.34

Conclusion

Passing off is a form of tort or an actionable wrong. The object of this law is to protect the
goodwill and reputation of a business from dishonest encroachment. No man is entitled to
represent his goods as the goods of another man and no man is permitted to use any mark,
symbol, device or other means thereby misrepresenting to the ultimate customer. The
misrepresentation leads to erosion of the distinctiveness of the brand name consequently
damaging the goodwill of the business with which the mark or symbol is attached. The
concept of dilution of trademark has an important role to play in proving a passing off action.
To succeed in a passing off action, the plaintiff has to establish sufficient goodwill and
reputation in a trademark in relation to a business, deception or misrepresentation caused by
the defendant in relation to the business and irreparable loss or damage suffered towards
business and goodwill as a consequence of the defendants‟ action. Therefore the law of
passing off can be summarized in one short general proposition – no man may pass off his
goods as those of another.
The laws related to trademarks introduced through in statutes in 1999 and amended in 2002.
Through this amendment the legislation tries to reduce the loophole of and drawback of the
acts like, act also empowers courts to proceed ex parte against defendants in cases where they
fail to appear. In such circumstances, ex parte orders may be issued for; injunctions,
discovery of documents, preservation of infringing goods and prevention of the defendant

33
Supra n.5. See also Aerators Ltd. v. Tollitt, [1902] 2 Ch. 319; World Athletics & Sporting Publications Ltd. v.
ACM Webb (Publishing) Co. Ltd., [1981] FSR 27.
34
Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., supra n.21; Chiman Lal v. Parasmal,
(1997) PTC 729 (Bom); Wulfing v. Cipla, AIR 1984 Bom 281; Aristoc Ltd. v. Rysta Ltd., [1943] 60 RPC
87.
from disposing of or dealing with its assets in a manner that may adversely affect the
trademark owner‟s right to recover damages, costs or other pecuniary remedies.
The recent judgment of the Supreme Court of India in Dodha House v S K Maingi, 2006 (32)
PTC 1 (SC), the Supreme Court did not allow causes of action arising from infringement of a
registered trade mark to be joined with passing off action regarding the same product against
the same defendant because the lower court was found to have jurisdiction only regarding
infringement proceedings, and not for passing off. The Court held that a civil court would not
have jurisdiction to grant relief against acts of passing off as well as infringement if the suit
was instituted in a jurisdiction where neither the defendant was carrying on business nor the
infringing goods were sold in a genuine commercial sense.
The Dodha House judgment now means that securing registration of trademarks in India is
even more important, as it might now be inconvenient to rely on common law rights for
brand protection in India. But this is one face of the coin and in another face the criminal
liability is much lower than the civil liability in trademark infringement in Indian laws.
Recently a damages culture has emerged in IP litigation in India, whereby the Indian courts,
particularly the Delhi High Court, have handed down a series of decisions granting
compensatory as well as punitive and exemplary damages to plaintiffs for infringement of
their IP rights. The trend of awarding punitive and exemplary damages started with Time
Incorporated v Lokesh Srivastav (2005 (30) PTC 3 (Del)), where the court awarded both
compensatory damages and punitive damages for infringement of the trademark TIME. The
court awarded the plaintiff Rs500,000 for loss of reputation, plus Rs500,000 in punitive
damages, including interest; the total damages award was Rs1.6 million.

So in nutshell in present era the passing off as remedy for trademark is important weapon for
registered and unregistered trademark infringement for the traders in India.