Introduction
Identity plays a vital role not just for humans but for companies, goods and services too.
The entire concept of trademarks has originated through the marks or signatures early artisans used to engrave on their utilitarian or artistic items and what we see today is just an evolved version of this system. The owner of a trademark is protected by giving him/her the exclusive right to use it to identify products or services, or to permit others to use it for monetary gain.
Hence, a trademark is an important element of a company’s business expansion, the reputation it holds and management strategy. Along with the owner, even the consumer benefits from it since they can easily distinguish between brands, services and even companies. Identification is made simpler through trademarks.
As per the Trademarks Act that was passed in 1999, the proprietor upon registering the trademark under legitimate grounds has the ability to seek relief and redressal if the trademark is infringed upon.
However, it is to be noted that prior to the Act, an action for infringement could only be filed in India if the products or commodities that fell under the same category were involved which posed a problem but infringement action is now also applicable in the case of comparable, related, similar and cognate goods now. This is a significant development for infringement actions since the definition of comparable, same, or different products changed along with the evidence required to show infringement
The Trademarks Act of 1999 governs the use of trademarks. The exclusive right to use the trademark for the products and services for which the trademark was registered has been granted to the trademark owner. Particularly, Section 28 of this act says that if the registration of a trademark is valid then the proprietor has all exclusive rights to use the trademark in relation to their goods and services and also seek relief in case of infringement of trademark
But since there was only a remedy for registered trademarks, the question about protection of unregistered trademarks came into picture and the legal maxim, Umbi Jus Ibi Remedium which means ‘where there is a right there is a remedy’ resulted in the principle of passing off which is available for people whose unregistered trademarks have been misrepresented. In a wider context, infringement is defined as taking unfair advantage of or harming a trademark’s unique character or goodwill. Passing off, on the other hand, refers to a person’s deceptive portrayal of products as those of someone else.[1]
Passing Off
In layman’s terms if a person sells his goods as that of another or leads the consumer in believing so is a simple case of passing off. Passing off has been brought into picture for protection of goods that fall under the category of unregistered trademarks. When a proprietor registers their trademark, then such a case falls under the ambit of infringement of trademark and relief for the same is conferred through Trademarks act, 1999.
The principle of passing off as defined in the case of Perry vs Truefitt, “Nobody has the right to represent his goods as the goods of somebody else”[2] The laws on passing off have evolved throughout time. It previously used to be limited to portraying one person’s goods as those of another, but was subsequently expanded to include trade and services. Later, the purview was furthered to include both business and non-business operations. It now covers a wide range of unfair commerce and unfair business practices in circumstances in which one person’s actions undermine the goodwill associated with the actions of some other person or group of people.
The burden of proof for cases of passing off lies with the claimant as the need to provide enough evidence or demonstrate that consumers are most likely prone to confusion between the two goods or companies due to the similarity. The major element to constitute passing off is whether the motive of the defendant was that to confuse the public as this act of misrepresentation has led to many damages.[3]
Cases of passing off:
Britannia Industries Ltd. v. ITC Ltd.
The respondent (ITC Limited) had filed a civil suit against Britannia Industries Limited, for the infringement of the respondents’ product named Sunfeast Farmlite. It should not be simple for anyone to claim exclusivity over a colour combination, especially when it has only been used for a short amount of time, according to the court. An order may be placed in their favour only after it has been proved, that the colour combination has become characteristic or unique of a person’s goods wherein, one automatically associates the colour palette with the company or product. The court opined that this was not the situation in the instant case and that there is no requirement to look at the other components of misrepresentation or the possibility of damage if the initial condition of passing off has not been satisfied.[4]
Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors
In this particular case, the defendant’s company was selling pressure cookers that were being manufactured in India under the trade name HONDA. It is also to be noted that the defendant had applied for registration of trademark which was justly rejected but despite the rejection, this trade name was used by the defendant and hence the plaintiff decided to take legal action. Plaintiff is automobile company with connections all over the world and hence their identification of goods is done through their trade name which helps in automatically associating characteristics attached to the brand henceforth, the court had imposed restrictions upon the defendant as by continuing to use the trade name or even anything remotely similar, it could cause confusion and deception to the public.[5]
Smithkline Beecham v. V.R. Bumtaria
In this particular case at hand, the plaintiff was a well-established pharmaceutical company and went by the registered trademark ARIFLO with respect to their pharmaceutical preparations and the defendants were selling their product with a deceptively similar name ACIFLO in India. Hence, the plaintiff had applied for a permanent injection in order to restrain their operations from constituting infringement of trademark and cause damages but it is also to be noted that the plaintiff’s area of business was not India at that moment but their reasoning was that advertisements for the same have been published in various medical journals causing confusion to the public at hand[6]
Infringement Of Trademark
According to Section 29 of the Trademarks Act, 1999, Infringement of trademark is defined as “a use of a mark, by an unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered.”[7]
In simpler words, It is described as the unauthorised use of a registered trademark’s exclusive rights without the authorization of the registered owner or licensees. The courts have often presumed that the resemblance of two marks and the kind of products and services causes confusion in the public’s perception. They may take unfair advantage of the registered trademark’s well-deserved reputation causing damages. The infringing trademark must be deceptively similar or identical to the registered brand in order to establish a valid claim against a person for trademark infringement.[8]
Cases of trademark infringement:
Yahoo!, Inc. v. Akash Arora & Anr
In this particular case, plaintiff’s (Yahoo!) domain name was deceptively similar to that of defendant’s (Yahoo India!) and hence the plaintiff brought this to the Delhi High Court since the two domain names phonetically sounded similar too and confusion between the two was very much possible and the court ruled that this domain name has become unique and distinctive, and is associated with the plaintiff by the general public and hence it was held by that both trademark and domain names serve the same purpose and hence similar protection must be granted to domain names.[9]
Christian Louboutin v. Pawan Kumar
Louboutin shoes are well known shoe brand that established themselves through red soles and hence this red sole trademark has been registered in various countries by the plaintiff and it came to his notice that the defendant was selling shoes using the defendant’s trademark and the Delhi High Court had held that the trademark was associated with the plaintiff’s business and was known worldwide for their quality and brand. Hence, the defendant was ordered to pay damages to the plaintiff.[10]
Differences
- Unregistered products and services are protected by trademarks, but registered goods and services are protected by passing off. One of the most significant distinctions between Passing Off and trademark infringement is this. However, it is important to remember that the remedy available to the plaintiff in both Passing Off and trademark infringement is the same.
- In the case of passing off, it is not necessary for the defendant to use the trademark of the plaintiff to bring the case of passing off into action but for an action to constitute infringement of trademark it is essential for the defendant to use the trademark of the plaintiff
- The burden to prove infringement has occurred lies with the plaintiff in case of trademark infringement.
- Trademark infringement is a statutory remedy, whereas passing off is a common law remedy.
- It is comparatively easy to get prosecuted under criminal remedies for trademark infringement than passing off
- Passing off actions must be resolved under Section 20 of the Civil Procedure Code 1908, but trademark infringement suits can be resolved under Section 134 of the Trademarks Act 1999[11] and the proprietor of the trademark can seek relief through Sections 27, 30, 34, 35 under the same act also various WIPO rules and regulations can grant relief.
- To constitute the crime of trademark infringement, registration of the trademark is an essential whereas in the case of passing off it is essential to prove damage of goodwill and misrepresentation.
Cases:
Listen LTD. v/s Harley
In this particular case, the judge had provided with a distinction between the two where he stated that if you are confining the violation of a registered mark, you can prevent the person from ever using the mark; however, if you are preventing him from marketing the article under the same label word that the plaintiff or another person has been using without distinguishing it from the Plaintiff’s good, it is a different matter.[12]
S. Syed Mohideen v. P. Sulochana Bai.
“Both the appellant and the respondent were registered owners of the trademark ‘Irrutukadai Halwa,’ but the respondent proved in the Supreme Court that it is not just about the use of the trademark, but it has become a household name for her family as they have been selling this halwa since the 90s and have formed a reputation based on this to which the court said that because it has become the respondent’s goodwill, it is protected.”[13]
Conclusion
The trademark must be protected both from a commercial standpoint and for the protection of customers from fraud and deception since it causes damages to both ends. Unregistered goods and services are subject to the passing-off action. In comparison to trademark infringement, the scope of passing off is far broader.
The burden of proof on plaintiff is much greater in cases of passing off with regards to unregistered trademarks because it is difficult to prove the damages and misrepresentation if the trademark in itself is not registered therefore, the act gives some relief to a number of users
[1] Manzoor Elahi, Passing Off and Infringement of Trademarks – India, SSRN Electronic Journal (2013).
[2] Perry v Truefitt: CA 8 Dec 1842, (1842) 49 ER 749, [1842] EngR 1167.
[3] Consolidated Foods Corporation v. Brandon and Co., Private Ltd., AIR 1965 (Bombay) 35.
[4] Britannia Industries Ltd. v. ITC Ltd. 2017 (70) PTC 66 (Del).
[5] Honda Motors Co. Ltd. v. Charanjit Singh, (2002) 101 DLT 359, 2003 (26) PTC1 (DEL)
[6] Smithkline Beecham v. V.R. Bumtaria, MANU/DE/2890/2005
[7] The Trademarks Act, 1999, Section 29, No. 47, Acts of Parliament, 1999 (India).
[8] George Miaoulis & Nancy D’Amato, Consumer Confusion & Trademark Infringement, 42 Journal of Marketing , 48 (1978).
[9] Yahoo!, Inc. v. Akash Arora & Anr, [78 (1999) DLT 285]
[10] Christian Louboutin v. Pawan Kumar [CS (COMM) 714/2016].
[11] The Trademarks Act, 1999, Section 134, No. 47, Acts of Parliament, 1999 (India).
[12] Listen LTD. v/s Harley, (1929) 4 RPC 11 (2).
[13] S. Syed Mohideen v. P. Sulochana Bai, 2016 ( 66 ) PTC 1 ( SC ).
YLCC would like to thank Chemitiganti Lakshmi Minati for her valuable contribution in this article.
