Is there infringement protection for unregistered trademarks under UK law?
What is an unregistered trademark?
The property right in an unregistered trademark lies not in the mark itself but in the goodwill in the business in connection with which it has been used (Reddaway v Banham [1896] AC 199 and AG Spalding & Bros v AW Gamage Limited [1915] 32 RPC 273).
Unregistered trademark rights do not exist at the outset of the creation of a trademark. These rights accumulate over a period of time and can usually be said to exist once the trademark can be said to effectively distinguish the business from their competitors. Unregistered trademark rights generally exist in a particular territory once the trademark has developed a reputation with respect to the goods and/or services.
What is the relevant statute?
The jurisdiction is that of the courts of England and Wales.
Trademarks Act 1994 section 11 (3) sets out that an “earlier right” exists so that an unregistered trademark or other sign continuously used in relation to goods or service can be relied on for the right to sue for passing off.
How are unregistered trademarks protected against infringement?
Unregistered trademarks are protected through the tort of passing off. The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav.66 at 73). There is no statutory cause of action for passing off. The tort has developed on an ad hoc basis, by way of decisions that often seem motivated by a judicial desire not to let an unmeritorious wrongdoer escape liability.
The tort of passing off does not afford the owner of the goodwill a monopoly in the mark or get-up; it protects the trader’s business against what might in broad terms be called a certain type of “unfair competition”.
Two forms of passing off exist:
1. The “Classic Form”
· Involves a three-part test – this “classical trinity” test was described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12)
· A goodwill or reputation attached to the goods or services
· A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant
· Damage to the claimant, by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant
2. The “Extended Form”
· Developed in connection with actions in passing off brought by (at least one of) a class of traders sharing the (collective) goodwill in a mark
· Explained by Lord Diplock in the Advocaat case (Warnick (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd [1980] RPC 31) as comprising five elements:
i. A misrepresentation;
ii. Made by a trade in the course of trade;
iii. To prospective customers of his or ultimate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another (in sense that this is a reasonably foreseeable consequence);
v. Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so
These two forms are not different torts. Instead, the courts refer to one form or the other depending on which is more appropriate to the facts of the case.
Who can sue for passing off?
Actions may be brought by anyone who can established the existence of the three elements of goodwill, misrepresentation and damage. These actions are open to all types of traders, including companies, partnerships and sole traders.
What is goodwill?
Goodwill is “the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.” (Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at page 223).
This is legal property that the owner may deal with as he wishes. The courts will sometimes attribute goodwill to the party who is primarily associated with the name or other indicia in question.
What qualifies as misrepresentation?
The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation may take the form of an express statement by the defendant to this effect or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services as are used by the claimant.
What qualifies as damage?
Action in passing off can be brought to protect goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his identifiable goodwill, or in a quia timet action, that damage to the claimant’s goodwill is reasonably foreseeable. Millet LJ stated in Harrods, “damage to reputation without damage to goodwill is not sufficient to support an action for passing off” (Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 718).
What are the key differences between passing off and trademark infringement?
The differences relate to the constituent elements to what a claimant has to prove and what the court will look at. In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided. It will then need to demonstrate that the defendant has made a misrepresentation, whether intentionally or not intentionally, and that it has then suffered damage as a result of that.
With passing off, if you can show that actually consumers do recognise your goods for that reason or that actually a key reason why consumers buy them is because of those features, you can say more than likely you have got a goodwill there. This is reflected in some of the leading cases such as Jif Lemon which was the case which drew together all the historical law and set down the tests for passing off. Also, the Puffin-Penguin case where the claimant lost the registered trademark, but it won on passing off to do with the packaging of its biscuit.
Great research @Angeline. Here's where you could improve your research:
You have only mentioned about the lemon test and explained each point in theory. Legal research is about creating an argument that persuades the case in your favor by not only creating rebuttals but also mentioning arguments in your favour. So when you're talking about the two approaches, you should research about how those approaches have been used. have those approaches been used simultaneously or do they only have specific instances where in they are used?
your demonstration of the difference also requires a persuasive authority. Persuasive authority builds your case. Once you have that case, you demonstrate how the difference is actually applied.
Third, each of the elements that have been separately mentioned, great job, however, for good will where you have mentioned a case, analyse the research by explaining the facts of the case and how the court reached that conclusion. When you analyse, question yourself to find cases where such conclusion was not cited. You need to have both pro and against arguments for an issue.
Unregistered Trademarks and Infringement Protection:
Introduction:
Trademarks are an universally recognised intellectual property, that help distinguish between the origin of various goods or services. On the international level, the Agreement on Trade Related Aspects of Intellectual Property Rights sets out the minimum standards of protection (for intellectual property) to be provided by each Member, lays down certain general principles applicable to Intellectual Property Rights enforcement procedures, and makes dispute between WTO members about the respect of the TRIPS obligations subject to the WTO’s dispute settlement procedure. Further, the Madrid System provides for international trade mark registration based on one international application. It is governed by the Madrid Agreement concerning the International Registration of Marks, and the Protocol relating to the Madrid Agreement.
Trademark Law in India:
Trademark law is based on the dictum ‘nobody has any right to represent his goods as the goods of somebody else’, and that ‘nobody has the right to pass off his goods as the goods of somebody else’, which evolved from the case of Southern v, How in 1617. The Indian Trade Marks Act, 1940 was based on the British Trade Marks Act, 1938, and was the first legislation in India on the subject.
The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules thereunder. It acts as a resource and information centre and is a facilitator in matters relating to trade marks in the country. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register trademarks which qualifies for registration under the Act and Rules.
Registered and Unregistered Trademarks:
Registration of a trademark gives the proprietor a bundle of exclusive rights over the registered trademark. Registration of a trademark gives a monopoly right, relating to use of the mark, to the proprietor of the mark. It affords better protection to the proprietor, by giving him right to bring an action for infringement. Section 27 of the Act of 1999 bars an action of infringement for unregistered trademark.
Registration might be beneficial, but is not mandated by law. However, an unregistered trademark does not enjoy the same legal benefits as given to a registered trademark. Unregistered trademarks are protected by the common law tort of passing off. The remedy of passing off is based on the on the aforementioned dictum.
Violation of the exclusive rights granted to the registered proprietor of the trademark amounts to infringement of trademark. A non-permitted user is said to infringe a trademark when he uses an identical, similar, or deceptively similar mark to that of the registered proprietor, without the authorisation of the registered proprietor of the trademark.
Passing off is a common law remedy which may be available to the user of a trademark when his trademark is misappropriated by another user. To constitute passing off the courts will look for an element of misrepresentation by the misappropriating user, which damages the goodwill of the original user.
Conclusion:
Interestingly, the Indian trademark law protects the vested rights of a prior user against a registered proprietor. What this means is, when a person knowingly or unknowingly registers a trademark which is similar to that of a prior user, the law protects the existing interest of the prior user over the interest acquired by the registered user.
Please comment if you want to discuss my research on any specific point, or have any other query. Thank you for taking out the time to go through my article. I used the following resources:
good research @prateem. However, your research has a lot of unnecessary information. Introductions should be kept to 3-4 lines only when you're writing a short article of not more than 300-500 words. I like the fact that the research talks about the benefits if registering a trademark versus unregistered one. However, to make this research better, you need to mention how these benefits have been applied by a court. How does a court look at such cases. In theory, yes there are benefits, but when there's a case, how are these benefits analysed. You're on the right track for research but you need to focus on questioning your research. For example, xyz are the benefits, then I would question has unregistered ever been given such benefits, have any exemptions been made etc. Question your research.
INFRINGEMENT PROTECTION FOR UNREGISTERED TRADEMARKS
Unregistered Trademarks
An unregistered trademark is a trademark which is not registered under the Trade Marks Act 1999 in relation to the goods and services and does not have safeguards against infringement. An unregistered trademark is represented by the trademark symbol ™.
Unregistered trademarks posses certain benefits and can be protected under the common law tort albeit no action for infringement is allowed for unregistered trademarks under Section 27 Trademarks Act, 1999. Sub-section (2) of Section 27 provides that the Act shall not be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
Therefore, an unregistered trademark can be protected by means of common law tort of passing off which is based on the principle which says that “a man may not sell his own goods under the pretense that they are the goods of another man” (N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714)
In a passing- off action, the plaintiff’s right is independent of such a statutory right to a trade mark which is established by evidence of reputation and goodwill of the business and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing- off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. Printers (Mysore) Private Ltd. v. Pothan Joseph, [1960] 3 S.C.R.
In order to succeed in a passing-off action, a plaintiff must prove three elements: Reckitt & Colman vs. Borden 1990) RPC 341 (HL)
1. It has reputation in its trademark in relation to its goods or services (Good Will)
2. The defendant's actions misrepresent the origin of the defendant's goods or services to customers (Misrepresentation)
3. The applicant has suffered loss as a result of the defendant's actions. (Damage)
In the matter between Kishore Zarda Factory (P) Ltd. vs J.P. Tobacco House And Ors AIR 1999 Delhi 172, the Hon’ble Delhi High Court taking into consideration the law settled by Century Traders vs Roshan Lal Duggar Co AIR 1978 Delhi 250 held that in a passing off action the priority in adoption and use of a trade mark is superior to priority in registration.
When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered as per Section 21. In action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods, in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. Dutt Sharma vs. N.P. Laboratories, AIR 1965 SC 980
In Astra Ideal Ltd v.TTK Pharma Ltd AIR 1992 BOM 35 the Bombay High court held that actual confusion is not required to be proved even if there is likelihood of confusion it amounts to infringement.
In Seven Towns Ltd v M/s Kiddiland, the Delhi High Court granted an injunction in favour of the plaintiff in respect of the unregistered trade dress for Rubik’s Cube, which it claimed had been in use for over 40 years with over 350 million products sold. The court observed that in trade dress issues, points of similarity rather than dissimilarity must be the focal point. Taking into account the target consumer’s, the Hon’ble court granted the injunction against use of similar shapes and packaging for the defendant’s Rancho Cube product.
The Hon’ble Delhi High Court in the matter between M/s RJ Components & Shafts v. M/s Deepak Industries Ltd CS(OS) 900/2002 & CC 2/03 held that prior user of a trademark shall override the subsequent user of trademark even if the second user has got registration for its mark.
In the case of S.M. Chemicals & Electronics Ltd. v. Symtronics (Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 decided on 7-8-1975 by Rege, J. of Bombay High Court)), wherein the plaintiffs sought to restrain in the defendants from infringing the plaintiffs' registered mark. ‘SYSTRONICS’ and passing off their electronics goods under the mark of ‘SYMTRONICS’ as and for the plaintiffs' electronic goods and also from carrying on business under the trade style ‘SYMTRONICS’, the Hon’ble Bombay High Court held that no prima facie case was made out as regards infringement of plaintiffs' trade mark by the defendants. The Court further held that the nature of the goods as manufactured by the defendants was different than those of the plaintiffs. It was further held that the possibility of confusion or deception being not in existence, it was not necessary to, grant injunction as sought by the plaintiffs.
Factors to be taken into consideration while deciding Suit for Injunction in passing off action
In trade mark matters, it is necessary to go into the question of `comparable strength' of the cases of either party, apart from the three golden principles of injunction. [Barclay's Bank Inc vs. R.B.S. Advanta (1998 RPC 307)]; [S.M. Dyechem Ltd. vs. Cadbury (India) Ltd. (2000) 5 SCC 573]. If there is a likelihood of the offending trade mark invading the proprietary right, a case for temporary injunction is made. Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Delhi 250.
Difference between Infringement and Passing Off
An action for passing off is a Common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark." AIR 1965 SC 980
Nice article Somnath! I can clearly see the distinction between infringement and passing off a trademark. Nice research with the case laws too, they are very pertinent.
This is really good research @somanth. I can see a good distinction between infringement and passing off. However, your research still remain incomplete due to a lack of analysis as well as complete research on a particular point. What needs to be done is this:
When you find a case law for example, Reckitt & Colman vs. Borden 1990) RPC 341 (HL) - Find out how those three elements have been applied in a particular case. Once you have done this then you move on to discussing this statement - "in a passing off action the priority in adoption and use of a trade mark is superior to priority in registration."
So the most important point of research is that before you move on to the next point of research, make sure you have covered all bases for that point. If the research is too much then restrict it to only that point and mention that you will only discuss the three elements, how they have been applied whether separately or together all three in case.
Is there infringement protection for unregistered trademarks under UK law?
What is an unregistered trademark?
The property right in an unregistered trademark lies not in the mark itself but in the goodwill in the business in connection with which it has been used (Reddaway v Banham [1896] AC 199 and AG Spalding & Bros v AW Gamage Limited [1915] 32 RPC 273).
Unregistered trademark rights do not exist at the outset of the creation of a trademark. These rights accumulate over a period of time and can usually be said to exist once the trademark can be said to effectively distinguish the business from their competitors. Unregistered trademark rights generally exist in a particular territory once the trademark has developed a reputation with respect to the goods and/or services.
What is the relevant statute?
The jurisdiction is that of the courts of England and Wales.
Trademarks Act 1994 section 11 (3) sets out that an “earlier right” exists so that an unregistered trademark or other sign continuously used in relation to goods or service can be relied on for the right to sue for passing off.
How are unregistered trademarks protected against infringement?
Unregistered trademarks are protected through the tort of passing off. The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842) 5 Beav.66 at 73). There is no statutory cause of action for passing off. The tort has developed on an ad hoc basis, by way of decisions that often seem motivated by a judicial desire not to let an unmeritorious wrongdoer escape liability.
The tort of passing off does not afford the owner of the goodwill a monopoly in the mark or get-up; it protects the trader’s business against what might in broad terms be called a certain type of “unfair competition”.
Two forms of passing off exist:
1. The “Classic Form”
· Involves a three-part test – this “classical trinity” test was described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12)
· A goodwill or reputation attached to the goods or services
· A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant
· Damage to the claimant, by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the claimant
2. The “Extended Form”
· Developed in connection with actions in passing off brought by (at least one of) a class of traders sharing the (collective) goodwill in a mark
· Explained by Lord Diplock in the Advocaat case (Warnick (Erven) Besloten Veenootschap v J Townend & Sons (Hull) Ltd [1980] RPC 31) as comprising five elements:
i. A misrepresentation;
ii. Made by a trade in the course of trade;
iii. To prospective customers of his or ultimate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another (in sense that this is a reasonably foreseeable consequence);
v. Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so
These two forms are not different torts. Instead, the courts refer to one form or the other depending on which is more appropriate to the facts of the case.
Who can sue for passing off?
Actions may be brought by anyone who can established the existence of the three elements of goodwill, misrepresentation and damage. These actions are open to all types of traders, including companies, partnerships and sole traders.
What is goodwill?
Goodwill is “the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom.” (Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at page 223).
This is legal property that the owner may deal with as he wishes. The courts will sometimes attribute goodwill to the party who is primarily associated with the name or other indicia in question.
What qualifies as misrepresentation?
The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation may take the form of an express statement by the defendant to this effect or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services as are used by the claimant.
What qualifies as damage?
Action in passing off can be brought to protect goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his identifiable goodwill, or in a quia timet action, that damage to the claimant’s goodwill is reasonably foreseeable. Millet LJ stated in Harrods, “damage to reputation without damage to goodwill is not sufficient to support an action for passing off” (Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 718).
What are the key differences between passing off and trademark infringement?
The differences relate to the constituent elements to what a claimant has to prove and what the court will look at. In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided. It will then need to demonstrate that the defendant has made a misrepresentation, whether intentionally or not intentionally, and that it has then suffered damage as a result of that.
With passing off, if you can show that actually consumers do recognise your goods for that reason or that actually a key reason why consumers buy them is because of those features, you can say more than likely you have got a goodwill there. This is reflected in some of the leading cases such as Jif Lemon which was the case which drew together all the historical law and set down the tests for passing off. Also, the Puffin-Penguin case where the claimant lost the registered trademark, but it won on passing off to do with the packaging of its biscuit.
Key cases:
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513
Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWCA Civ 920
Unregistered Trademarks and Infringement Protection:
Introduction:
Trademarks are an universally recognised intellectual property, that help distinguish between the origin of various goods or services. On the international level, the Agreement on Trade Related Aspects of Intellectual Property Rights sets out the minimum standards of protection (for intellectual property) to be provided by each Member, lays down certain general principles applicable to Intellectual Property Rights enforcement procedures, and makes dispute between WTO members about the respect of the TRIPS obligations subject to the WTO’s dispute settlement procedure. Further, the Madrid System provides for international trade mark registration based on one international application. It is governed by the Madrid Agreement concerning the International Registration of Marks, and the Protocol relating to the Madrid Agreement.
Trademark Law in India:
Trademark law is based on the dictum ‘nobody has any right to represent his goods as the goods of somebody else’, and that ‘nobody has the right to pass off his goods as the goods of somebody else’, which evolved from the case of Southern v, How in 1617. The Indian Trade Marks Act, 1940 was based on the British Trade Marks Act, 1938, and was the first legislation in India on the subject.
The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules thereunder. It acts as a resource and information centre and is a facilitator in matters relating to trade marks in the country. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register trademarks which qualifies for registration under the Act and Rules.
Registered and Unregistered Trademarks:
Registration of a trademark gives the proprietor a bundle of exclusive rights over the registered trademark. Registration of a trademark gives a monopoly right, relating to use of the mark, to the proprietor of the mark. It affords better protection to the proprietor, by giving him right to bring an action for infringement. Section 27 of the Act of 1999 bars an action of infringement for unregistered trademark.
Registration might be beneficial, but is not mandated by law. However, an unregistered trademark does not enjoy the same legal benefits as given to a registered trademark. Unregistered trademarks are protected by the common law tort of passing off. The remedy of passing off is based on the on the aforementioned dictum.
Violation of the exclusive rights granted to the registered proprietor of the trademark amounts to infringement of trademark. A non-permitted user is said to infringe a trademark when he uses an identical, similar, or deceptively similar mark to that of the registered proprietor, without the authorisation of the registered proprietor of the trademark.
Passing off is a common law remedy which may be available to the user of a trademark when his trademark is misappropriated by another user. To constitute passing off the courts will look for an element of misrepresentation by the misappropriating user, which damages the goodwill of the original user.
Conclusion:
Interestingly, the Indian trademark law protects the vested rights of a prior user against a registered proprietor. What this means is, when a person knowingly or unknowingly registers a trademark which is similar to that of a prior user, the law protects the existing interest of the prior user over the interest acquired by the registered user.
Please comment if you want to discuss my research on any specific point, or have any other query. Thank you for taking out the time to go through my article. I used the following resources:
https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
http://www.ipindia.nic.in/writereaddata/images/pdf/madrid-protocol-tmr.pdf
https://www.bananaip.com/ip-news-center/history-and-evolution-of-trademark/
https://www.mondaq.com/india/trademark/537964/difference-between-unregistered-and-registered-trademark
https://www.mondaq.com/india/trademark/127680/trademarks-law-in-india-everything-you-must-know
INFRINGEMENT PROTECTION FOR UNREGISTERED TRADEMARKS
Unregistered Trademarks
An unregistered trademark is a trademark which is not registered under the Trade Marks Act 1999 in relation to the goods and services and does not have safeguards against infringement. An unregistered trademark is represented by the trademark symbol ™.
Unregistered trademarks posses certain benefits and can be protected under the common law tort albeit no action for infringement is allowed for unregistered trademarks under Section 27 Trademarks Act, 1999. Sub-section (2) of Section 27 provides that the Act shall not be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
Therefore, an unregistered trademark can be protected by means of common law tort of passing off which is based on the principle which says that “a man may not sell his own goods under the pretense that they are the goods of another man” (N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714)
In a passing- off action, the plaintiff’s right is independent of such a statutory right to a trade mark which is established by evidence of reputation and goodwill of the business and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing- off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. Printers (Mysore) Private Ltd. v. Pothan Joseph, [1960] 3 S.C.R.
In order to succeed in a passing-off action, a plaintiff must prove three elements: Reckitt & Colman vs. Borden 1990) RPC 341 (HL)
1. It has reputation in its trademark in relation to its goods or services (Good Will)
2. The defendant's actions misrepresent the origin of the defendant's goods or services to customers (Misrepresentation)
3. The applicant has suffered loss as a result of the defendant's actions. (Damage)
In the matter between Kishore Zarda Factory (P) Ltd. vs J.P. Tobacco House And Ors AIR 1999 Delhi 172, the Hon’ble Delhi High Court taking into consideration the law settled by Century Traders vs Roshan Lal Duggar Co AIR 1978 Delhi 250 held that in a passing off action the priority in adoption and use of a trade mark is superior to priority in registration.
When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered as per Section 21. In action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods, in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. Dutt Sharma vs. N.P. Laboratories, AIR 1965 SC 980
In Astra Ideal Ltd v.TTK Pharma Ltd AIR 1992 BOM 35 the Bombay High court held that actual confusion is not required to be proved even if there is likelihood of confusion it amounts to infringement.
In Seven Towns Ltd v M/s Kiddiland, the Delhi High Court granted an injunction in favour of the plaintiff in respect of the unregistered trade dress for Rubik’s Cube, which it claimed had been in use for over 40 years with over 350 million products sold. The court observed that in trade dress issues, points of similarity rather than dissimilarity must be the focal point. Taking into account the target consumer’s, the Hon’ble court granted the injunction against use of similar shapes and packaging for the defendant’s Rancho Cube product.
The Hon’ble Delhi High Court in the matter between M/s RJ Components & Shafts v. M/s Deepak Industries Ltd CS(OS) 900/2002 & CC 2/03 held that prior user of a trademark shall override the subsequent user of trademark even if the second user has got registration for its mark.
In the case of S.M. Chemicals & Electronics Ltd. v. Symtronics (Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 decided on 7-8-1975 by Rege, J. of Bombay High Court)), wherein the plaintiffs sought to restrain in the defendants from infringing the plaintiffs' registered mark. ‘SYSTRONICS’ and passing off their electronics goods under the mark of ‘SYMTRONICS’ as and for the plaintiffs' electronic goods and also from carrying on business under the trade style ‘SYMTRONICS’, the Hon’ble Bombay High Court held that no prima facie case was made out as regards infringement of plaintiffs' trade mark by the defendants. The Court further held that the nature of the goods as manufactured by the defendants was different than those of the plaintiffs. It was further held that the possibility of confusion or deception being not in existence, it was not necessary to, grant injunction as sought by the plaintiffs.
Factors to be taken into consideration while deciding Suit for Injunction in passing off action
In trade mark matters, it is necessary to go into the question of `comparable strength' of the cases of either party, apart from the three golden principles of injunction. [Barclay's Bank Inc vs. R.B.S. Advanta (1998 RPC 307)]; [S.M. Dyechem Ltd. vs. Cadbury (India) Ltd. (2000) 5 SCC 573]. If there is a likelihood of the offending trade mark invading the proprietary right, a case for temporary injunction is made. Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Delhi 250.
Difference between Infringement and Passing Off
An action for passing off is a Common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark." AIR 1965 SC 980