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Documenti di Professioni
Documenti di Cultura
PASSING-OFF AND
INFRINGEMENT OF
TRADEMARK IN
INDIA
SUBMITTED TO DR. S. Z. AMANI
SAHIL CHOWDHURY
5TH YEAR
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ACKNOWLEDGEMENT
Firstly, I would like to express my profound sense of gratitude towards the Almighty
ALLAH for providing me with the authentic circumstances which were mandatory for the
completion of my research work.
I am also thankful to Dr. S. Z. AMANI, for her invaluable support, encouragement,
supervision and useful suggestions throughout this research work. Her moral support and
continuous guidance enabled me to complete my work successfully. Her intellectual thrust
and blessings motivated me to work rigorously on this study. In fact this study could not have
seen the light of the day if her contribution had not been available. It would be no
exaggeration to say that it is her unflinching faith and unquestioning support that has
provided the sustenance necessary to see it through to its present shape.
Sahil Chowdhury
B.A.LL.B (Hons) 9th Semester
5th Year
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TABLE OF CONTENTS
1. Introduction To Intellectual Property
2. What Is Intellectual Property?
3. Nature Of Intellectual Property Rights
4. What Are Intellectual Property Rights?
5. Why Promote And Protect Intellectual Property?
6. Literature Review
7. Procedure Of Registration Of Trademark In India
8. Trademarks Law In India
9. Introduction
10. Importance Of Trademark
11. Passing Off
12. Elements To Be Proved For Passing Off Action
13. Characteristics Of Passing Off Action
14. Issue In A Passing Off Action
15. Factors To Be Considered In Case Of An Action For Passing Off
16. Defences To A Passing Off Action
17. New Facet Of Passing-Off Action
18. A Case Analysis On Passing-Off
19. Infringement Of A Trade Mark
20. What Constitutes Infringement?
21. Infringement- Various Factors
22. Following Are The Instances Where The Acts Constituted Infringement Of
Trademark
23. Who Can Sue For Infringement?
24. Who Can Be Sued?
25. Jurisdiction
26. Period Of Limitation
27. Issues In Infringement Suits
28. Evidence In Infringement Actions
29. Acts Not Constituting Infringement (Section 30)
30. Case Analysis On Infringement
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integrated circuits, and undisclosed information have been brought under the umbrella of
intellectual property.
Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article,
literary & artistic work, symbols etc. used in commerce. Intellectual property rights as a
collective term includes the following independent IP rights which can be collectively used
for protecting different aspects of an inventive work for multiple protection:
Patents
Copyrights
Trademarks
Intellectual property is divided into two categories: industrial property, which includes
inventions (patents), trademarks, industrial designs, and geographic indications of source: and
Copyright, which includes literary and artistic works such as novels, poems, plays, films and
musical works etc.
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LITERATURE REVIEW
In addition, technological developments in the 20th century have transformed the majority of
wealth creating work from physically based to knowledge-based. Technology and
knowledge are now the key factors of production. With increased mobility of information and
global work force, knowledge and expertise can be transported instantly around the world,
and any advantage gained by one company can be eliminated by competitive improvements
overnight. The only comparative advantage a company will enjoy will be the process of
innovation-combining market and technology know-how with the creative talents of
knowledge workers to solve a constant stream of competitive problems.and its ability to
derive value from information. The Major challenge before the organization in the coming
years would be to create a culture for IPR regime, so that creative work and innovations get
duly protected. More and more organizations may have to provide at their cost the services of
IP management consulting firm for drafting / prosecution of intellectual property. IPR, very
broadly, are rights granted to creators and owners of works that are results of human
intellectual creativity. These works can be in the industrial, scientific, literary and artistic
domains, which can be in the form of an invention, a manuscript, a suite of software, or a
business name. The importance of Intellectual Property in India is well established at all
levels statutory, administrative and judicial. India ratified the agreement establishing the
World Trade Organization (WTO). This agreement, inter-alia, contains an agreement on
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Trade Related Aspects of IPRs (TRIPS), which came into force from 1st January 1995. It
lays down minimum standards for the protection and enforcement of IPRs in member
countries, which are required to promote effective and adequate protection of intellectual
property rights with a view to reducing distortions of and impediments to international trade.
The obligations under the TRIPS agreement relate to provision of minimum standard of
protection within the member countries legal systems and practices. The agreement provides
for norms and standards in respect of following areas of intellectual property.
Patents
Copyrights
Trademarks
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infringement action and an action for passing off are quite different from each other, an
infringement action is a statutory remedy and an action for passing off is a common law
remedy.
Accordingly, in order to ascertain infringement with regard to a registered trademark, it is
necessary only to establish that the infringing mark is deceptively similar to the registered
mark and no further proof is required. In the case of a passing off action, proving that the
marks are deceptively similar alone is not sufficient. The use of the mark should be likely to
deceive confusion. Further, in a passing off action it is necessary to prove that the use of the
trademark by the defendant is likely to cause injury to the plaintiff's goodwill, whereas in an
infringement suit, the use of the mark by the defendant need not cause any injury to the
plaintiff. Trademark infringement laws are of assistance the trademark holders to keep
awareness about infringement of trademark.
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INTRODUCTION
A trademark in relation to goods conveys to the general public and specifically to the
consumers about the origin and quality of those goods, thereby acquiring reputation in the
course of business and time. Therefore the concept of a trademark is the foundation of ones
business to distinguish from others. A good trademark is often the best salesman of the goods
and is a visual symbol of goodwill and stamp of quality.
A trademark is one of the elements of Intellectual Property Right (IPR) and is represented by
the symbol or . It is a distinctive sign, symbol or indicator which is used by an
individual, business organization or other legal entity to identify uniquely the source of its
products or services to consumers, and to distinguish its products or services from those of
other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a
combination of these elements. Trademarks are used to facilitate and enhance the marketing
of a commodity and is a sign that indicates to consumers the source and reputation of the
affixer of the mark and provides an important advertising and sales tool.
Every businessman who has spent considerable amount of money making his mark popular
will try to secure it from usage by unscrupulous competitors. Protection of trademark is
important not only from the business point of view but also for the protection of consumer
from fraud and imposition.
The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair
trade in every way and aims to foster and not to hamper competition, it also provides that no
one, especially a trader, is justified in damaging or jeopardizing anothers business by fraud,
deceit, trickery or unfair methods of any sort. This necessary precludes the trading by one
dealer upon the good name and reputation built up by another.
The first Trademark legislation was enacted in India in 1940, but before that, protection to
trademarks in the country was governed by the principles of common law based on English
cases. The law relating to protection of this form of industrial property is intricate and
complex.
The reputation of a business symbolized by a mark, under common law, can be protected
only by an action for Passing off. Registration of a trademark under the Trade Marks Act of
1999 gives statutory rights and slight infringement of it can invite an action for Infringement.
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However, even the unregistered trademarks are also protected as the Act itself provides that
an action of passing off remedy is available for unregistered trademark.
IMPORTANCE OF TRADEMARK
The importance of trademarks lies in their association with quality and consumer
expectations in a product or service. They can be seen as serving four main purposes:
Fourthly, protecting consumers from deception, that is to prevent the buying public
purchasing inferior goods or services in the mistaken belief that they originate from or
are provided by another trader.
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PASSING OFF
Passing off action is based on common law principle. The damages claimed for in an action
for passing off are un-liquidated damages. The action against passing off is based on the
principle that a man may not sell his own goods under the pretence that they are the goods
of another man.3 Similar view has been held in ICC Development (International) Ltd. vs.
Arvee Enterprises4 that the passing off action depends upon the simple principle that
nobody has any right to represent his goods as the goods of somebody else. In a passing off
action, the priority in adoption and use of trade mark is superior. Passing off is not defined in
the Trademark Act, 1999. It is referred to in Section 27 (2), 134 (1) (c) and 135 of the Act.
Section 27 (2) states that the rights of action against any person for passing off as the goods
of another person or the remedies in respect thereof are unaffected by the provision of the
Act. Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out
of the use of any trademark. Section one 135 specifies the remedies available in respect of
passing off arising from the use of a trademark.
Passing off cases are often cases of deliberate and intentional misrepresentation, but it is
well settled that fraud is not a necessary element of the right of action and the absence of the
intention to deceive is not a defence in an action for passing off though proof of fraudulent
intention may materially assist a plaintiff in establishing probability of deception.5
The concept of passing off which is a form of tort has undergone changes in the course of
time. At first it was restricted to the representation of ones goods as those of another. Later,
it was extended to business and services. Subsequently, it was further extended to professions
and non-trading activities. Now days, 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 law of passing off applies whenever there is the prospect of confusion between marks
and getup or where there is the prospect of confusion of identity through the unauthorised use
of similar marks or get-up. It is because the main consideration of passing off is whether
deception or confusion is likely to arise, passing off can be used to protect any kind of
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distinctive name, mark, logo or get-up used to identify a company or business as well as
products or services.
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The action of passing off lies where there is a real possibility of damage of goodwill to some
business or trading activity. Therefore, the plaintiff has to establish a goodwill in his business
or his goods or services with which the trade or public will be led to associate the defendants
activities.
In the case of Deepam Silk International vs. Deepam Silks9, while granting an order
of injunction restraining the defendant from using the plaintiffs trademark, the Karnataka
High Court observed that once the plaintiff has shown that he has been doing business for
more than a decade with the trade name and that he has not only applied for registration of a
trademark nearly a decade back, but also has spent lakhs of rupees on gaining the reputation
by spending towards advertisements in almost all medias available, the loss that would be
caused to the plaintiff, if another person like the defendant makes use of the same trade name
and sells the same goods, cannot be ascertained in terms of money. It is the reputation of the
plaintiffs trade name that will be in jeopardy. If the defendant is to sell inferior goods, it will
definitely affect the business of the plaintiff and will give an impression to the buyers of the
goods from the defendant that the goods sold by the trade name are not maintaining their
quality. Therefore, there is every likelihood of the plaintiff losing its customers and getting its
trade name defamed.
Passing-off by the defendant of his goods as the goods of the plaintiff injures the right of
property in the plaintiff, that right of property being his right to the goodwill of the business.
The law assumes or presumes that if the goodwill of a mans business has been interfered
with by the passing off of goods, damage results therefrom. The plaintiff need not wait to
show that damage has resulted; he can bring his action as soon as he can prove the passing
off; because it is one of the class of cases in which the law presumes that the plaintiff has
suffered damage.
2. Misrepresentation
The Plaintiff must demonstrate a misrepresentation by the defendant to the public leading or
likely to lead the public to believe that the goods or services offered by him are the goods and
services of him.
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In its classic form the misrepresentation which gives rise to an action of passing off is an
implied representation by the defendant that his goods are the goods of the plaintiff. As Lord
Dipluck explained in Advocaat case10 that:
Where the plaintiff and defendant were not competing traders in the line of business,
a false suggestion by the defendant that their business were connected with each other would
damage the reputation and thus the goodwill of plaintiffs business.
The basis of passing off action being a false representation by the defendant, it must be
proved in each case as a fact that the misrepresentation was made. The use by the defendant
in connection of the goods, of the mark, name, or get-up in question must represent such
goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or
quality; and the defendants use of such mark, name or get-up is calculated to deceive.11
3. Damage
The plaintiff must demonstrate that he suffered or in a quia timet action, that he is likely to
suffer damage by reason of the erroneous belief endangered by the defendants
misrepresentation that the source of the defendants goods or service is the same as the source
of those offered by the plaintiff.12 In a passing off action, damage is presumed even if there is
likelihood of deception.
In case of ICC Development (International) Ltd. vs. Arvee Enterprises13 and in the case of
Sakalain Meghajee vs. BM House (India) Ltd.14, the Delhi High Court cited the case of
Erven Warnik Besloten Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr.,15
wherein the House of Lords identified five characteristics which must be present in order to
create a valid cause of action for passing-off. The House of Lords held that passing-off is:
i.
A misrepresentation;
ii.
10
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iii.
iv.
Which is calculated to injure the business or goodwill of another trader which can
reasonably be foreseeable; and
v.
Which causes actual damage to a business or goodwill of the trader by whom the
action is brought or in a quia time (because he fears or apprehends) action will
probably do so.
In the case of Laxmikant V. Patel vs. Chetanbhai Shah16, the Honble Supreme Court held
the three elements of passing-off action are:i.
ii.
iii.
16
17
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business concerned in its production was the plaintiffs or was associated with the plaintiffs
business.20
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bearing a famous trademark might not be allowed to rely on his sales to maintain a
passing off action against another counterfeiter who has come into the market after
him.23
b. A false representation contained in the mark itself did furnish a defence at law and at
equity. Where a trademark is used exclusively in connection with a trade which was
itself fraudulent, the fraud in the trade which was itself carried on by the trademark is
a defence.24
c. The mark complained of is not distinctive of the plaintiffs business and there is no
likelihood of passing off by reason of defendants use of the mark.
d. The plaintiff is guilty of acquiescence, latches, etc. or the defendant has prior used the
mark.
e. The defendants mark represent his own name which he has the right to use. A man is
entitled to carry on his business in his own name so long as he does not do anything
more than that to cause confusion with the business of another, and so long he does it
honestly.25
f. The field of activities of the parties are completely different.26
g. The defendant claims right of concurrent use of his mark of his mark. Honest and
concurrent user of a trademark when established will constitute a defence.27
h. The defendants use of the mark is the bona fide description of the character or quality
of goods or services. However, the defence of the name being surname or personal
name, though available to individuals, is not applicable to a corporate body.28
i. Innocent misrepresentation by the defendant also constitutes a valid defence against
passing off action. Under Section 135 (3)27, where the defendant satisfies the court
that he was unaware of the existence and nature of plaintiffs trademark, and that
when he became aware he ceased to use the trademark complained of, the Court shall
not grant relief by way of damages or an accounts of profit.
j. The defendant is using the Plaintiffs mark by way of a license. Under Section 12 an
honest concurrent user would be protected. Under Section 30 (2) (c) (i), a defence is
always open that the proprietor of a registered trademark has expressly or impliedly
23
Leather cloth Co. Ltd. Vs. American Leather Cloth Co. Ltd., (1865) 11 ER 1435 (HL)
Newton Chambers & Co. ltd. Vs. Neptune Waterproof Paper Co. Ltd, (1935) 52 RPC 399; p.406
25
Rodgers vs. Rodgers, (1924) 41 RPC 277
26
Dunlop vs. Dunlop, (1889) 16 RPC 12
27
Manoj Plastics vs. Bhola Plastic, (1983) PTC 368
28
Kirloskar Diseal Recon Ltd. Vs. Kirloskar Proprietors Ltd, AIR 1996 Bom. 149
24
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consented to the use of the said trademark by the defendant. This defence, if laid,
would need a trial.29
k. The defendant may successfully plead and establish that the alleged misrepresentation
was made by his employee outside the scope of his authority and contrary to express
Instructions.30
l. Lastly, the defendant may plead that the plaintiff has abandoned his mark and that the
defendant has either already moved for rectification of register for removal of mark or
proposed to do so. Where a mark is abandoned, it may become common to trade.31
When abandoned, the mark may be appropriated by another person. The onus is on
the defendant to prove abandonment.32
29
QRG Enterprises vs. Surendra Electricals, 2005 (30) PTC 471 (Del.)
Boston Marine Patents Company Ltd. Vs. Wheeler & Thomson, (1954) 71 RPC 432
31
National Starch Manufacturing Co. vs, Munns Patent Maizena and Starch Co. (1894) 11
32
Noor Illahi Maqbul Illahi vs. R.J Wood & Co., (1928) Lah. 487; AIR 1928 Lah. 924
33
2003 (27) PTC 478 (Del.)
30
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Decision
As the Court found similarity of look and appearance of the defendants trade dress was that
with the plaintiffs trademark, the Plaintiff succeeded. The Honble High Court held that
trade dress protection is also available under the Trademark Law and that wide protection
against imitation or deceptive similarities of trade dress as like trademark is the soul for
identification of the goods as to its source or design; and as such is liable to cause confusion
in the minds of unwary customers, particularly, those who have been using the product fo a
period. The Court while granting an injunction in favour of Colgate expressed that the test in
such cases was whether there is likelihood of confusion or deception in the minds of unwary
customers, irrespective of dissimilarities in the trade name.35
Even if the goods are not same or similar to each other, then also no one can use the
registered trademark of a company for any kind of goods which may result in the harm to the
business and reputation of the company which is the owner of the trademark. In the case of
34
35
Ibid.
Ibid 500 (Para 59)
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Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors36 defendant Company was using the
trade name HONDA for Pressure Cookers which they are manufacturing in India and even
when their application for registration of this trademark had been rejected by the registrar
they continued using it and again applied for registration and hence plaintiff has brought this
plaint. Plaintiff is the well-known company having presence all over the world in the field of
Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing
business in India in association with the Siddharth Shriram Group with the name Honda Siel
Cars India Ltd. Plaintiff has established that his business or goods has acquired the reputation
and his trade name has become distinctive of his goods and the purchasing public at large
associates the plaintiff's name with them. The use of trademark HONDA by respondents is
creating deception or confusion in the minds of the public at large and such confusion is
causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff.
Hence court has restricted the defendants from using the trademark HONDA in respect of
pressure cookers or any goods or any other trade mark/marks, which are identical with and
deceptively similar to the trade mark HONDA of the plaintiff and to do anything which
amounts to passing off to the goods of the plaintiff.
In the case of Smithkline Beecham v. V.R. Bumtaria37, the plaintiff applied for permanent
injunction to restrain the defendant from infringing the trademark, passing off, damages,
delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical
preparations. Defendants were using the similar name ACIFLO for their product of the same
drug in India. Plaintiffs were not doing business in India for the particular product and argued
that since their advertisements are been published in medical journals hence they have a trans
border reputation and defendants should be stopped to use the similar trademark which
creating deception in customers.
Court said that mere publication of an advertisement in a journal cannot establish a transborder reputation. Such reputation if any is confined to a particular class of people, i.e., the
person subscribing to the said specialized journals and the same cant be said to be extended
to the general consumers. Thus any adverse effect on the firm in such a case cant be
amounted to the offence of passing off.
36
37
[2003(26)PTC1(Del)]
[MANU/DE/2890/2005]
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Though the dispute resulted in compromise where the defendant agreed and accepted the
plaintiffs exclusive right on the use of mark i.e. ARIFLO in India and abroad and further
agreed to not to manufacture pharmaceutical preparations under the mark ACIFLO or any
other mark identical or similar to ARIFLO.
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c. The defendant has taken any essential feature of the mark or has taken the whole of
the mark and then made a few additions and alterations.
d. The defendants use of the mark is in course of the trade in respect of goods/services
covered by the registered trademark.
e. The use of the infringing mark must be printed or usual representation of the marking
advertisements, invoices or bills. Any oral use of the trademark is not infringement.
f. The use by the defendant is in such manner as to render the use of the mark likely to
be taken as being used as a trademark.
g. The defendants use of the mark is not by way of permitted user and accordingly
unauthorised infringing use.
While the above is the general proposition of law as per Section 29 (1), the various
circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9)
of Section 29.
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ii.
ADDITIONS
Addition of extraneous matter, inconspicuous additions is infringement. If a person
incorporates whole or part of a registered Trademark of another, the addition of other
or matter would not save him from the charge of infringement.
iii.
impossible to suppose that such marks were devised independently of each other, in
absence of evidence of common origin, the conclusion that one party copied the mark
of another.
iv.
v.
vi.
PRINTING OF LABELS
Unauthorised printing of labels of the plaintiff will constitute infringement. Moreover,
if a copyright subsists in labels, it will constitute infringement of copyright as well.
vii.
viii.
ix.
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x.
MARKS
WITH
INTERNATIONAL
REPUTATION
USED
UNAUTHORISEDLY
In case of marks which have acquired international reputation, an action for its
protection against un-authorised use will lie even if the owner of the trademark does
not have any business activity in India.42
42
Torrent Pharmaceuticals Ltd. Vs. Wellcome Foundation Ltd. (Guj. H.C) 2001 (2) CTMR 158
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JURISDICTION
Suit for infringement or for passing off is to be filed in the court not inferior to a District
Court having jurisdiction to try the suit.43 District Court having jurisdiction includes a District
Court within the local limits of whose jurisdiction, at the time of the institution of the suit or
other proceedings, the person instituting the suit or other proceedings, or where there are
more than one person, any of them who:a. Actually and voluntarily resides; or
b. Carries on business; or
c. Works for gain; can bring in an action against the defendant.
PERIOD OF LIMITATION
Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the infringement is a
continuing one, a new course of action arises every time an infringement occurs. For
example, a continued sale of infringing article would give rise to a fresh cause of action.
43
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INFRINGEMENT
Following acts do not constitute infringement of the right to the use of a registered trademark:
1. Where the plaintiff has no title to sue;
2. Where the registration of the trademark is not valid and liable to be expunged;
3. When the use of the mark by the defendant is not an infringement under Section 29;
4. When a person uses a trademark in accordance with honest practices in industrial and
commercial matters that do not take unfair advantage.
5. When a person uses a trade mark in relation to goods or services indicating character,
quality or geographical origin
6. When a person uses a trade mark in relation to services to which the proprietor has
already applied the mark or registered user the object of the use is to indicate that the
proprietor or the registered user has performed the services.
44
45
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46
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manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food
articles for human consumption under the impugned trade mark/trade name/infringing artistic
label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade
name/infringing
artistic
work
containing
the
name/mark
'BIKANER
50
51
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RELIEFS IN SUIT
INFRINGEMENT
FOR
PASSING-OFF
AND
Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for
passing off and for infringement includes the following:1. Accounts of Profit
Account of profits are the actual profits which the defendant has made by infringing
the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of
relief which includes, at the option of the plaintiff, either damages or an account of
profit. In taking account of profits, the damage the plaintiff have suffered is totally
immaterial. The object of account of profit is to give to the plaintiff the actual profits
the defendant has made and of which it is established that the profits were improperly
made.52 Section 135 (3) expressly enacts that where the court is satisfied that it is a
case of innocent infringement, it shall grant only nominal damages. Further, in such
situation, the Court shall not grant an account of profits.
2. Damages
Damages are the compensation awarded to the Plaintiff by the defendant for the legal
injury caused by him to the plaintiff. Damages are the notional compensation paid to
the plaintiff irrespective of the actual amount of loss suffered by the plaintiff.
52
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Any loss of trade actually suffered by the plaintiff directly from the acts complained
of, or properly attributable to injury to the plaintiffs reputation, business, goodwill
and trade and business connection caused by the acts complained of.
ii.
iii.
Where the defendants goods are similar in quality to the plaintiffs goods, the
defendants wrongful act may cause injury to the plaintiffs business reputation.
In Yahoo Inc. vs. Sanjay V. Shah53, the Delhi High Court held that he defendants passed off
their goods as if the goods were manufactured by the plaintiff using the deceptively similar
Yahoo. The Honble High Court not only granted permanent injunction restraining the
defendants from the use of the trademark Yahoo, but also decreed for damages amounting
Rs. 5, 05,000/- in favour of the plaintiff.
3. Injunction
Injunction is one of the reliefs which an aggrieved person may obtain in any suit for
infringement of a registered trademark or for passing off of the registered trademark
or unregistered trademark. The remedy of injunction is an effective remedy in
preventing the infringement of registered trademark or unregistered trademark.
Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While
granting an injunction, the Court should always rely on the fact that whether the
balance of convenience lies with the plaintiff and whether an irreparable damage or
injury would occur to the plaintiff if injunction is not provided for against the
defendant.
Section 135 (2) further provides for ex parte injunction or any interlocutory order for
any of the following matters, namely:i.
ii.
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iii.
Restraining the defendant of or dealing with his assets in a manner which may
adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
In the case of Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar,54 the Delhi
High Court held as follows:Whenever a court considers it necessary in a particular case to pass an order of injunction
without notice to the other party, it must accord the reason for doing so, and also how the
object of granting injunction itself would be defeated if ex parte order is not passed, due to
delay. An order passed without such reasons is liable to be vacated.
INJUNCTION MAY BE OF FOLLOWING TYPES
I.
II.
Mareva Injunction
In such an order, the Court has the power to freeze defendants assets where there
exists a probability of the assets being dissipated or cancelled so as to make
judgement against him worthless or un-enforceable.
III.
Interlocutory Injunction
It is the most commonly sought and most often granted form of injunction. It serves to
take action against the defendant on the basis of past infringement. The interlocutory
injunction is an order restraining the defendant from continuance of the acts which
amount to infringement. It serves the purpose of preventing further infringement.
IV.
Perpetual Injunction
It is an order restraining the defendant totally, for all times to come, from doing any
act which infringes the right of the proprietor of the trademark. Perpetual injunction is
generally granted when the suit is finally decided.
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DIFFERENCE BETWEEN
INFRINGEMENT
PASSING-OFF
AND
In the case Durga Dutt Sharma V. N.P. Laboratories55, Honble Supreme Court laid the
difference between the two infringement and passing off. It was held that "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 trademark."
a. Conceptual Difference
1. Passing off action is based on common law principle that nobody has any right to
represent his goods as somebody else. Such action is recognised both in respect of
unregistered as well as registered trademark. An action for infringement on the
other hand is based on the right acquired by registration and is possible only in
respect of registered trademarks.
2. An action for infringement is a statutory right. It is dependent upon the validity of
the registration and subject to other restriction laid down in the Act.56 On the other
hand, in a passing off action registration of trademark is not relevant. It is based
on property in goodwill acquired by use of the mark.
3. The proprietor of an unregistered trademark whose mark is unauthorisedly used
by another cannot sue for infringement of a trademark. His only remedy lies in
bringing a passing off action.
4. In an infringement action, the plaintiff is not required to prove the reputation of
his mark, which is not the case in case of passing off. In passing off action, the
plaintiff has to prove that his mark has acquired reputation in relation to any goods
dealt with by him.
5. An infringement action can result in the restraining of defendant from using the
registered trademark whereas in a passing off action the defendant is restrained
from selling the article without clearly distinguishing from the goods of the
plaintiff.
55
56
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57
Saville Perfumery Ltd. Vs. Jump Perfect Ltd. (1941) 58 RPC 147 (161) upheld in M/S S.M. Dyechem Ltd vs.
M/S Cadbury (India) Ltd., AIR 2000 SC 2114
58
Durga Dutt Sharma V. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980, p.990
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Where a mark is registered, the plaintiff may combine his action for infringement along with
an action for passing off, where the plaintiff has used his mark and can establish goodwill and
reputation in connection with his business. This provides for a better protection of trademark.
CONCLUSION
Thus, from the above discussion it can be said that protection of trademark is important not
only from the business point of view but also for the protection of consumer from fraud and
imposition. However, it is beneficial if combined action for infringement and passing off is
brought in one suit as incorporating a plea of infringement, if the mark gets registered can
always amend the plaint. But in an action for infringement alone the plaintiff may not be
allowed to include a fresh cause of passing off in order to save the action. Since the scope of
passing off action is wider than an infringement action, if an action fails, there is a chance of
other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides
for a better protection of trademarks, the fact that the trademark law provides protection to
trademarks has come out to be a reality. The present Act expressly recognises the common
law remedy and thus saves both the registered and unregistered trademarks from being
misused.
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BIBLOGRAPHY
BOOKS REFERRED
Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.
Abhishek Manu Singhvi
JOURNALS REFERRED
WEBSITES VISITED
www.wikipedia.org
www.cll.com
www.tm-india.com
http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_A_Critical_and_Comparative_Study
www.thomsonreuters.com
www.indlii.org
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