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Passing Off (Trademark Act)

Passing Off (Trademark Act)
Passing Off (Trademark Act)


A passing off action is essentially a tort action aiming to protect commercial goodwill, encourage enterprise, and prevent the exploitation of business reputations. It safeguards economic assets by prohibiting any misrepresentation that may cause confusion or harm to another trader's business or goodwill.

Elements of Passing Off

The modern tort of passing off involves five key elements:

  1. Misrepresentation: A trader makes a misrepresentation likely to injure another trader's business or goodwill.

  2. Calculated Injury: The misrepresentation occurs in the course of trade.

  3. Prospective Customers: It's directed at prospective customers or ultimate consumers of the goods/services.

  4. Actual Damage: The misrepresentation causes actual damage to the plaintiff's business or goodwill.


Requirements for Passing Off

Several requirements must be met to establish passing off:

  • The trademark used by the plaintiff has gained a vendible character.

  • The plaintiff has used the trademark before the defendant.

  • The defendant's use of a similar trademark would likely cause irreparable loss to the plaintiff's business.

  • There is a high likelihood of the defendant's trademark infringing on the plaintiff's proprietary rights.

Passing off doesn't require identical goods; similarity and likelihood of confusion are sufficient for legal action.

The distinction between passing off and infringement lies in their legal nature: passing off is a common law remedy for deceit, while infringement is a statutory remedy for the exclusive use of a registered trademark.

Remedies in Passing Off Actions

Remedies available in passing off actions include injunctions, damages, or account of profits. Each deceitful act constitutes a fresh cause of action, granting the aggrieved party the right to seek remedies for each instance of misrepresentation.

Case law

In the case of Brihan Karan Sugar Syndicate Private Limited vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, the Supreme Court reinforced a critical aspect in suits for passing off: the necessity to substantiate the goodwill of a product.

The Court emphasised that merely presenting sales figures wouldn't suffice; the plaintiff must also demonstrate the expenses incurred in promoting and advertising the product to establish goodwill effectively.

This ruling stemmed from an appeal against a High Court decision to stay the execution of a decree favouring the appellant-plaintiff in a suit involving copyright infringement and passing off. The crux of the matter lay in the plaintiff's failure to sufficiently establish reputation or goodwill during the trial.

While the plaintiff had submitted statements of sales and promotional expenses certified by a Chartered Accountant, the absence of the accountant's examination to validate these documents led to a lacuna in the case.

The Court acknowledged the relevance of such statements in determining the prima facie merit of the plaintiff's claims. However, it underscored that during the final hearing, these figures must be legally substantiated.

Consequently, the Supreme Court upheld the High Court's decision to stay the Trial Court's decree due to the plaintiff's failure to establish reputation or goodwill effectively.

Additionally, the Court addressed the issue of acquiescence as a defence in copyright infringement actions. It noted that the plaintiff's withdrawal of objections regarding the defendant's use of certain labels created a prima facie case of acquiescence, favouring the defendant.

Moreover, the Court expressed concern over the conduct of the plaintiff's counsel during the trial, emphasising the need for cooperation with Trial Courts to address the backlog of cases.

Persistent objections raised by the counsel disrupted the trial proceedings, prompting the Court to underscore the importance of fair and reasonable conduct by legal practitioners.

In the background of the case, Brihan Karan Sugar Syndicate Private Limited, the appellant-plaintiff, sought relief against Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, the respondent-defendant, for copyright infringement and passing off.

The Trial Court ruled in favour of the plaintiff, finding the defendant's labels deceptively similar and thus infringing on the plaintiff's copyright.

However, the subsequent appeal to the Bombay High Court resulted in a stay on the execution of the decree, which the Supreme Court upheld. The Court considered various factors, including the denial of temporary injunction relief during the suit proceedings, in reaching its decision to maintain the stay order.


Landmark Case

In the case of Havells India Limited v. Panasonic Life Solutions India Pvt Ltd & Anr., the Delhi High Court rendered a significant judgement clarifying the interplay between claims of design infringement and passing off.

The court held that merely asserting trademark rights in registered designs does not preclude a plea of passing off. It established that a composite suit addressing both design infringement and passing off is maintainable.

In this matter, Havells India (the Plaintiff) alleged infringement of its design for ceiling fans named "ENTICER" by Panasonic Life Solutions (the Defendant) with its new series called "VENICE PRIME," which the Plaintiff deemed as a direct copy.

The Plaintiff argued that the high visual similarity between the products could easily confuse consumers, particularly those who typically do not scrutinise product packaging details.

The Defendant countered, challenging the novelty of the Plaintiff's design and asserting that the Plaintiff's claim of trademark rights in the registered designs made them vulnerable to cancellation. Relying on previous judgments, the Defendant argued that if a registered design is used as a trademark, it could be subject to cancellation.

However, the Court emphasised that while such assertions could weaken the registered designs, they do not necessarily nullify the possibility of a passing off claim. It underscored that passing off claims can extend beyond mere trademark infringement, encompassing broader aspects of trade dress, presentation, and overall consumer perception.

Moreover, the Court noted that despite the vulnerability of the Plaintiff's designs due to trademark assertions, the Plaintiff could still establish passing off by demonstrating misrepresentation by the Defendant, resulting in harm to the Plaintiff's reputation.

To determine infringement under the Designs Act, the Court applied the visual comparison test, finding striking similarities between the rival designs. It rejected the Defendant's argument regarding the commonality of the design concept, particularly noting the Defendant's timing in introducing its similar products after the Plaintiff had established goodwill.

The Court also dismissed the Defendant's contention regarding differences in packaging, noting that ceiling fans are typically displayed without packaging and are only boxed upon purchase, making it easier for the Defendant to pass off its products as the Plaintiff's.

Consequently, the Court granted interim injunction relief in favour of the Plaintiff, finding that the Defendant's actions constituted both design infringement and passing off, intending to deceive consumers and capitalise on the Plaintiff's reputation.


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