Identity or representation of any legal entity is dependent on any of the gesture or mark or name with which it is associated and identified by the public at large. Trademark is one such identity of the legal entities more generally of businesses.
The repute of any trademark is always under a threat by third parties from the very first day it is brought before public. Now these threats broadly are classified into two categories i.e. infringement and passing off.
Before diving deep into the discussion we need to understand that the Trade Mark Act, 1999 do not define passing off but it do define the term infringement.
Section 29 of the Trademark Act, 1999 defines infringement as follows:
“29. Infringement of registered trade marks.—
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”
On a simple reading of the above section one can deduce when the mark used by the potential infringer is similar to the one of the trademark holder and which is used to promote the similar goods or services then it is a trademark infringement.
Passing off, on the contrary means selling of goods by a person purporting them to be the goods of another person.
Hon’ble Delhi High Court in Paragraph 62 of Cadbury India Limited and Ors. vs Neeraj Food Products (2007) 2 ILR(Delhi) 1065, relied on the following principal:
“The House of Lords in:Reckitt & Colman Products Ltd. v. Borden INC. and Ors. 1990 RPC 341.” had laid down that the plaintiff in a passing off action should prove three things which are described as classical trinity. They are:
- that there was a goodwill or reputation attached to the goods or to the services which the plaintiff supplied, in the mind of the purchasing public by association with the plaintiff’s identifying get up;
- that there was a misrepresentation to the public likely to lead the people to believe the goods offered by the defendants were the goods of the plaintiff;
- that the plaintiff was suffering or plaintiff is suffering or is likely to suffer by reason of the erroneous belief on account of the misrepresentation of the defendants.”
From the above discussion it is clear that the infringement of a trademark has a statutory remedy under section 29 of the Trade Marks Act, 1999 and occurs when the impugned mark is being used for the similar goods and services for which there is an existing trade mark.
On the contrary, Passing off has a common law remedy wherein, the potential infringer is trying to pass off his goods or services purporting them to be the goods and services of some other person and is trying to ride over his reputation and good will.
Furthermore, Passing off has a wider remedy than that of infringement.
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
Kartik Kumar Agarwal