Author Name:   Prerna Chopra

Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another...

Passing off under trademark – An Appraisal

Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another.

The concept of passing off has undergone changes in the course of time. At first 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 was further 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 or group of persons.

The basic question in this tort turns upon whether the defendants' conduct is such as to tend to mislead the public to believe that the defendants' business is the plaintiff's or to cause confusion between the business activities of the two.

The tort of passing off is sufficiently wide to give relief to charities engaged in trading type activities.

In British Diabetic Association V Diabetic Society 1, both the parties were charitable societies. Their names were deceptively similar. The words 'Association' and 'Society' were too close since they were similar in derivation and meaning and were not wholly dissimilar in form. Permanent injunction granted.

Elements Of Passing Off
The three fundamental elements of passing off are Reputation, Misrepresentation and Damage to goodwill. These three elements are also known as the CLASSICAL TRINITY, as restated by the House of Lords in the case of Reckitt & Colman Ltd V Borden Inc . It was stated in this case that in a suit for passing off the plaintiff must establish firstly, goodwill or reputation attached to his goods or services. Secondly he must prove a misrepresentation by the defendant to the public i.e. leading or likely to lead the public to believe that the goods and services offered by him are that of the plaintiff's. Lastly he must demonstrate that he has suffered a loss due to the belief that the defendant's goods and services are those of the plaintiff's.

Modern Elements of Passing off - In the case Erven Warnink Vs. Townend 3 , Lord Diplock gave the essential modern characteristics of a passing off action. They are as follows: -
1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or services supplied by him.
4. Which is calculated to injure the business or goodwill of another trader.
5. Which causes actual damage to a business or goodwill of the trader by whom the action is brought.
The above concept of passing off can be explained with the help of few case laws: Honda Motors Co. Ltd V Charanjit Singh & Others

Facts: Plaintiff was using trademark "HONDA" in respect of automobiles and power equipments. Defendants started using the mark "HONDA" for its pressure cookers. Plaintiff bought an action against the defendants for passing of the business of the plaintiff.

Held: It was held that the use of the mark "Honda" by the defendants couldn't be said to be an honest adoption. Its usage by the defendant is likely to cause confusion in the minds of the public. The application of the plaintiff was allowed.

Why passing off is necessary ?
The Trademark is providing protection to registered goods and services, but the passing off action is providing a protection to unregistered goods and services. The most important point is that the remedy is same in both the cases but the Trademark is available to only the registered goods and services and passing off is available to unregistered goods and services. To more knowledge of this context we can summaries the case of Durga Dutt vs. Navaratna Pharmaceutical[2]; in this case the Supreme Court is set out the distinction between infringement and passing off. The action for infringement is a statutory remedy conferred on the registered owner of a registered Trade mark and has an exclusive right to the use of the trade mark in relation to those goods. And the passing off is available to the unregistered goods and services.

The second most important point is that the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but in the case of an action for infringement this will not applicable.

The third important distinction between these two is that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale marked differences or indicate clearly a trade origin different from that of the registered owner of the mark would be immaterial; but in case of passing off the defendant may escape liability if he can show that the added matter is sufficiently to distinguish his goods from those of the plaintiff.

In the cases of infringement the burden is always lies to the plaintiff. In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd.[4] In this case an infringement action is fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark otherwise, the defendant has done what is calculated to pass off his goods as those plaintiff.

What the plaintiff must establish in a passing off action?
It is essential for success in a passing off action based on the use of a mark or get up that the plaintiff should show that the disputed mark or get up has become by user distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public as indicating the plaintiff’s goods.[5]

When the passing off arise?
The passing off action is arise when there is misrepresentation, when it is harm the existence plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the business of another trader and which cause actual damage to the business or goodwill of the trader by the whom action is brought.

But these requirements were reduced to three in Reckitt & Colman Products Ltd. V. Borden Inc. now there are three essential requirements for the passing off action:

v The Claimant’s Goodwill: Although damage is the gist of an action for passing off, but the plaintiff must show that there is a reasonable reason of his being injured by the defendant’s action, even if the conduct of the defendant might be calculated to deceive the public. A private individual cannot institute a suit for passing off even if the defendant practices deception upon the public, unless it is proved that the defendant’s action is likely to cause damage to the individual.

v Misrepresentation: Misrepresentation in the simplest form of passing off. If A says falsely these goods I am selling are B’s goods. It is a clear case of passing off. In simple way we can say that misrepresentation should lead. Or be likely to lead confusion on the part of consumers. In case ofKhemraj v. Garg, in this case the defendants had copied the get up, layout, design and colour scheme, etc. and the name “manavpanchang,mani ram panchang” and “shri vallabh Mani Ram panchang” of the plaintiff’s panchang.The court held that it is similar to the plaintiff’s product and Interim injunction was granted.

In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd. In this case the defendant manufacture an underwear which named dawn as similar to the plaintiff’s manufactured underwear don, which is creating confusion in the minds of people because the layout, get up and colour combination is same to the plaintiff’s product.

v Damage: Damages are available in a passing off action. And remedy is available in both cases whether the infringement suit or passing off action in both the cases remedy is given.

How the passing off action arises?
The case of Akash Arora vs. Yahoo Inc[10], in this case the court held that the yahooindia is creating a confusion in the mind of the people. And the defendant yahooindia is same as the plaintiff’s yahoo. But as a student of law I am not go with the case decision because my views regarding to the case is that his site may be better than his competitors. And second important thing is that those who access the Internet they are capable to distinguish which site is yahoo. in and which one is yahooindia.So the question of confusion is not create when the people are able to distinguish between the sites then there will be no question of passing off arise.

The second case In Reckitt & Colman of India Ltd. vs. M.P. Ramachandran & Anr,Hon’ble Calcutta High Court (Barin Ghosh, J.) laid down five principles for granting an injunction in case of comparative advertising:
i. A tradesman is entitled to declare his goods to be best in the world even though the declaration is untrue;

ii. He can also say that his goods are better than his competitors, even though such statement is untrue;

iii. For the purpose of saying that his goods are the best in the world or his goods are better than his competitors he can even compare the advantages of his goods over the goods of others;

iv. He however, cannot, while saying that his goods are better than his competitors, say that his competitor’s goods are bad. If he says so, he really slanders the goods of his competitors and their goods, which is not permissible.

v. If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the court is also competent to grant an order of injunction restraining repetition of such defamation.

The Hon’ble court also observed in this case that “One can boast about technological superiority of his product and while doing so can also compare the advantages of his product with those which are available in the market. He can also say that the technology of the products available in the market has become old or obsolete. He can further add that the new technology available to him is far more superior to the known technology, but he cannot say that the known technology is bad and harmful or that the product made with the known technology is bad and harmful. What he can claim is only that his product and his technology is superior. While comparing the technology and the products manufactured on the basis thereof, he can say that by reason of the new superior technology available to him, his product is much superior to others. He cannot, however while so comparing say that the available technology and the products made in accordance therewith are bad and harmful.”

Reverse passing off
Another variety, somewhat rarer is so-called 'reverse passing off'. This occurs where the defendant markets the plaintiff's product as being the defendant's product (see John Roberts Powers School v Tessensohn [1995] FSR 947). It will be recalled that orthodox passing off entails the defendant representing that his product is the plaintiff's product. In many cases, reverse passing off can be explained under the ordinary rules: for example where a defendant may represent that he or she made goods which were in fact made by the plaintiff so as to pass off his own business as a branch of the plaintiff's.

Conclusion
In the conclusion the researcher concludes that the passing off action is applied in unregistered goods and services, and in infringement of suit and passing off in both the cases the remedy will be same. Then the passing off is arise in three cases first when it is injured the claimants good will, secondly in misrepresentation and thirdly in damages, where the position is same like in infringement suit. And lastly when the concept of passing off is reading with domain name and technological changes then the concept of passing off is in different dimension.

The  author can be reached at: prernachopra@legalservices.com

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