Acknowledgement

Writing a project is not an easy task it requires hard labour, deep study
and thorough knowledge of the topic given. Thus who helped in
making this project successful I would like to express my deep feeling
of gratitude towards them for being a hand of support for me always.
First of all I would like to thank my subject teacher Mrs.I.Chatterji
who has given me opportunity to make this project and enlightened
me with the intricacy of the subject. Secondly I would show my
gratitude towards my friends who guided me all through making this
project successful. Lastly I would thank my family for being a support
in each and every thing required for completion of this project.

Abhas Jaiswal
VIII semester
Section A

INDEX
Title

Page no.

1. Acknowledgement..........................................................1
2. Introduction.....................................................................3
3. Indian Trademark law.........3
4. Passing Off..........................................................4
5. Elements of Passing off...................................................5
6. Why Passing off is necessary?........................................7
7. When the Passing off arise?............................................9
8. How the Passing off action arise?...................................11
9. Reverse Passing off.13
10.
Conclusion.......................................................................14
11.
Bibliography....................................................................15

Introduction
Intellectual property rights are the rights given to persons over the
creations of their minds and give the creator an exclusive right over
the use of his/her creation for a certain period of time.

Indian Trademark Law

Indian trademark law statutorily protects trademarks as per the
Trademark Act, 1999 and also under the common law remedy
of passing off. 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.
The law of trademark deals with the mechanism of registration,
protection of trademark and prevention of fraudulent trademark. The
law also provides for the rights acquired by registration of trademark,
modes of transfer and assignment of the rights, nature of
infringements, penalties for such infringement and remedies available
to the owner in case of such infringement.
Trademark: According to Section 2(zb) of the Trade Marks Act,
1999, trade mark means a mark capable of being represented
graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of
goods, their packaging and combination of colours. A mark can
include a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colours
or any such combinations.

Passing Off
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 nontrading 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.
The basic question in this tort turns upon whether the defendants'
conduct is such as to tend to mislead the public to believe that the
defendants' business is the plaintiff's or to cause confusion between
the business activities of the two.
The tort of passing off is sufficiently wide to give relief to charities
engaged in trading type activities.
In British Diabetic Association V Diabetic Society 1, both the parties
were charitable societies. Their names were deceptively similar. The
words 'Association' and 'Society' were too close since they were
similar in derivation and meaning and were not wholly dissimilar in
form. Permanent injunction granted.

Elements of Passing Off

The three fundamental elements of passing off are Reputation,
Misrepresentation and Damage to goodwill. These three elements are
also known as the CLASSICAL TRINITY, as restated by the House of
Lords in the case of Reckitt & Colman Ltd V Borden Inc . It was
stated in this case that in a suit for passing off the plaintiff must
establish firstly, goodwill or reputation attached to his goods or
services. Secondly he must prove a misrepresentation by the
defendant to the public i.e. leading or likely to lead the public to
believe that the goods and services offered by him are that of the
plaintiff's. Lastly he must demonstrate that he has suffered a loss due
to the belief that the defendant's goods and services are those of the
plaintiff's.
Modern Elements of Passing off - In the case Erven Warnink Vs.
Townend, Lord Diplock gave the essential modern characteristics of a
passing off action. They are as follows: 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.
The above concept of passing off can be explained with the help of
few case laws: Honda Motors Co. Ltd V Charanjit Singh & Others
Facts: Plaintiff was using trademark "HONDA" in respect of
automobiles and power equipments. Defendants started using the
mark "HONDA" for its pressure cookers. Plaintiff bought an action
against the defendants for passing of the business of the plaintiff.
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Held: It was held that the use of the mark "Honda" by the defendants
couldn't be said to be an honest adoption. Its usage by the defendant is
likely to cause confusion in the minds of the public. The application
of the plaintiff was allowed.

Why Passing Off is necessary?

The Trademark is providing protection to registered goods and
services, but the passing off action is providing a protection to
unregistered goods and services. The most important point is that the
remedy is same in both the cases but the Trademark is available to
only the registered goods and services and passing off is available to
unregistered goods and services. To more knowledge of this context
we can summaries the case of Durga Dutt vs. Navaratna
Pharmaceutical; in this case the Supreme Court is set out the
distinction between infringement and passing off. The action for
infringement is a statutory remedy conferred on the registered owner
of a registered Trade mark and has an exclusive right to the use of the
trade mark in relation to those goods. And the passing off is available
to
the
unregistered
goods
and
services.
The second most important point is that the use by the defendant of
the trade mark of the plaintiff is not essential in an action for passing
off, but in the case of an action for infringement this will not
applicable.
The third important distinction between these two is that if the
essential features of the trade mark of the plaintiff have been adopted
by the defendant, the fact that the get up, packing and other writing or
marks on the goods or on the packets in which he offers his goods for
sale marked differences or indicate clearly a trade origin different
from that of the registered owner of the mark would be immaterial;
but in case of passing off the defendant may escape liability if he can
show that the added matter is sufficiently to distinguish his goods
from
those
of
the
plaintiff.
In the cases of infringement the burden is always lies to the plaintiff.
In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd.[4] In this
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case an infringement action is fail where plaintiff cannot prove

registration or that its registration extends to the goods or to all the
goods in question or because the registration is invalid and yet the
plaintiff may show that by imitating the mark otherwise, the
defendant has done what is calculated to pass off his goods as those
plaintiff.
What the plaintiff must establish in a passing off action?
It is essential for success in a passing off action based on the use of a
mark or get up that the plaintiff should show that the disputed mark or
get up has become by user distinctive of the plaintiffs goods so that
the use in relation to any goods of the kind dealt in by the plaintiff of
that mark or get up will be understood by the trade and the public as
indicating the plaintiffs goods.

When the Passing Off arise?

The passing off action is arise when there is misrepresentation, when
it is harm the existence plaintiffs goodwill, when it is made by a
trader in the course of trade, which is injure the business of another
trader and which cause actual damage to the business or goodwill of
the trader by the whom action is brought.
But these requirements were reduced to three in Reckitt & Colman
Products Ltd. V. Borden Inc. now there are three essential
requirements for the passing off action:
The Claimants Goodwill: Although damage is the gist of an
action for passing off, but the plaintiff must show that there is a
reasonable reason of his being injured by the defendants action,
even if the conduct of the defendant might be calculated to
deceive the public. A private individual cannot institute a suit for
passing off even if the defendant practices deception upon the
public, unless it is proved that the defendants action is likely to
cause damage to the individual.
Misrepresentation: Misrepresentation in the simplest form of
passing off. If A says falsely these goods I am selling are Bs
goods. It is a clear case of passing off. In simple way we can say
that misrepresentation should lead. Or be likely to lead
confusion on the part of consumers. In case ofKhemraj v. Garg,
in this case the defendants had copied the get up, layout, design
and colour scheme, etc. and the name manavpanchang,mani
ram panchang and shri vallabh Mani Ram panchang of the
plaintiffs panchang.The court held that it is similar to the
plaintiffs product and Interim injunction was granted.

In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd. In this
case the defendant manufacture an underwear which named
dawn as similar to the plaintiffs manufactured underwear don,
which is creating confusion in the minds of people because the
layout, get up and colour combination is same to the plaintiffs
product.
Damage: Damages are available in a passing off action. And
remedy is available in both cases whether the infringement suit
or passing off action in both the cases remedy is given.

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How the Passing off action arises?

The case of Akash Arora vs. Yahoo Inc, in this case the court held that
the yahoo-India is creating a confusion in the mind of the people. And
the defendant yahoo-India is same as the plaintiffs yahoo. But as a
student of law I am not go with the case decision because my views
regarding to the case is that his site may be better than his
competitors. And second important thing is that those who access the
Internet they are capable to distinguish which site is yahoo.in and
which one is yahoo-India. So the question of confusion is not create
when the people are able to distinguish between the sites then there
will be no question of passing off arise.
The second case In Reckitt & Colman of India Ltd. vs. M.P.
Ramachandran & Anr, Honble Calcutta High Court (Barin Ghosh, J.)
laid down five principles for granting an injunction in case of
comparative advertising:
i.

A tradesman is entitled to declare his goods to be best in the

world even though the declaration is untrue;

ii.

He can also say that his goods are better than his competitors,
even though such statement is untrue;

iii.

For the purpose of saying that his goods are the best in the
world or his goods are better than his competitors he can even
compare the advantages of his goods over the goods of others;

iv.

He however, cannot, while saying that his goods are better than
his competitors, say that his competitors goods are bad. If he
says so, he really slanders the goods of his competitors and their
goods, which is not permissible.

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v.

If there is no defamation to the goods or to the manufacturer of

such goods no action lies, but if there is such defamation an
action lies and if an action lies for recovery of damages for
defamation, then the court is also competent to grant an order of
injunction restraining repetition of such defamation.
The Honble court also observed in this case that One can
boast about technological superiority of his product and while
doing so can also compare the advantages of his product with
those which are available in the market. He can also say that the
technology of the products available in the market has become
old or obsolete. He can further add that the new technology
available to him is far more superior to the known technology,
but he cannot say that the known technology is bad and harmful
or that the product made with the known technology is bad and
harmful. What he can claim is only that his product and his
technology is superior. While comparing the technology and the
products manufactured on the basis thereof, he can say that by
reason of the new superior technology available to him, his
product is much superior to others. He cannot, however while
so comparing say that the available technology and the products
made in accordance therewith are bad and harmful.

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Reverse Passing off

Another variety, somewhat rarer is so-called 'reverse passing
off'. This occurs where the defendant markets the plaintiff's
product as being the defendant's product (see John Roberts
Powers School v Tessensohn [1995] FSR 947). It will be
recalled that orthodox passing off entails the defendant
representing that his product is the plaintiff's product. In many
cases, reverse passing off can be explained under the ordinary
rules: for example where a defendant may represent that he or
she made goods which were in fact made by the plaintiff so as
to pass off his own business as a branch of the plaintiff's.

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Conclusion
In the conclusion the researcher concludes that the passing off
action is applied in unregistered goods and services, and in
infringement of suit and passing off in both the cases the
remedy will be same. Then the passing off is arise in three cases
first when it is injured the claimants good will, secondly in
misrepresentation and thirdly in damages, where the position is
same like in infringement suit. And lastly when the concept of
passing off is reading with domain name and technological
changes then the concept of passing off is in different
dimension.

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Bibliography
1. http://www.legalservicesindia.com
2. http://www.ssrana.in
3. www.wikipedia.com

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