Intelectual property right and Passing Off

INTELECTUAL
PROPERTYRIGHT
B.COM LLB (HONS) SEM-7
1

DEFINITION
 A trademark or trade mark is a distinctive sign or indicator of some
kind which is used by an individual, business organization or other
legal entity to uniquely identify the source of its products and/or
services to consumers, and to distinguish its products or services
from those of other entities.
 A trademark is a device which can take almost any form, as long as it
is capable of identifying and distinguishing specific goods or
services.
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INDIAN TRADEMARK LAW
 Indian trademark law provides protection to trademarks statutorily under
the Trademark Act, 1999 and also under the common law remedy of
Passing Off.
 Passing off is a common law tort which can be used to enforce
unregistered trademark rights. The tort of passing off protects the goodwill
of a trader from a misrepresentation that causes damage to goodwill.
 Statutory protection of trademark is administered by the Controller General
Of Patents, Designs and Trade Marks, a government agency which reports
to the Department of Industrial Policy and Promotion(DIPP), under the
Ministry of Commerce and Industry.
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PROVISION RELATING TO PASSING OFF IN TRADEMARK
 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.
4

CHARACTRICTS PASSING OFF
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.
5

ELEMENTS OF CLAIM OF PASSING OFF
1. The reputation of goods
2. Possibility of deceptions
3. Likelihood of damages to the plaintiff
This three elements are been explained in
the case of In Reckitt & Coleman v. Borden.
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TEST OF PASSING OFF
 In the test of passing off the trademark , that no man is entitled to
carry on his business in such a way or by such a name as to lead to
the belief that he is carrying on the business of another man or to
lead to the belief that the business which he is carrying on has any
connection with the business carried on by another man. The
principle is followed in the case.
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 In Ellora Industries. Delhi v. Banarasi Dass Goel,3 the Delhi
High Court observed that the principles governing the law of
passing off are now settled In a passing off action, the
plaintiff has to prove not only the similarity in the trade
names but also that the defendant is deceptively passing off
its goods as that of the plaintiff's or that there is bound to be
confusion in the minds of the consumers.
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THE COURTS GENERALLY CONSIDERD THE
FOLLOWING FACTORS IN ORDER TO DETERMINE
AND ADJUDICATE AFROSAID ISSUES:-
1. The nature of mark i.e. whether the marks are word marks or label
marks or composite marks, i.e. both words and labels works.
2. The degree of resembleness between the marks, phonetically similar
and hence similar in idea.
3. The nature of the goods in respect of which they are used as trade
marks.
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4 The similarity in the nature, character and performance of the goods of
the rival mark.
5 The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligdice and a decree of
care they are likely to exercise in purchasing and/or using the goods.
6. The mode of purchasing the goods or placing orders for the goods.
7. Any other surrounding circumstances which may be relevant in the
extent of dissimilanty between the competing marks.
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SUITS FOR PASSING OFF
 Passing of occurres when one trader attempts to pass of his
goods by misrepresenting them so as to make consumers
believe that his goods are the same as those of another
trader.
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DIFFERENCE OF PASSING OFF AND
INFRINGEMENT OF TRADEMARK
TRADEMARK INFRINGEMENT
i. Statutory remedy
ii. Registration of trademark is required
iii. Prosecution under Criminal Law is
easier.
PASSING OFF
i. Common Law Remedy
ii. Registration of trademark is not
necessary
iii. Prosecution under Criminal Law is
relatively harder.
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PASSING OFF
iv. Not only presumption of confusion
among the public but also deception of the
public and injury to the goodwill of the
Plaintiff has to be proved.
TRADEMARK INFRINGEMENT
iv. Presumption of confusion among the
public is the main criteria to be proved by
the Plaintiff in case of infringement of a
trademark.
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Intelectual property right and Passing Off

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