Passing Off and Infringement of Trademar
Passing Off and Infringement of Trademar
Passing Off and Infringement of Trademar
ON
INFRINGEMENT & PASSING OFF
SUBMITTED BY
MANZOOR ELAHI LASKAR
ROLL NO. 21, 2ND SEMESTER
IPR
INTRODUCTION
“classical trinity” – the three elements of tort of passing off – Goodwill, Misrepresentation &
Damage
Goodwill:- Goodwill is the benefit and advantage of a good name, reputation, and
connection of a business. The goodwill of a business must emanate from a particular center
or source. it has power of attraction sufficient to bring customers home to the source from
which it emanates.
Misrepresentation:- 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.
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 defendant’s
misrepresentation that the source of the defendant’s goods or service is the same as the
source of those offered by the plaintiff. In a passing off action, damage is presumed even
if there is likelihood of deception.
ICC Development (International) Ltd. vs. Arvee Enterprises, the
Court held that “passing-off” is:
A misrepresentation;
Made by a trader in course of business;
Toprospective customers of his or ultimate consumers of goods
or services supplied by him;
Which is calculated to injure the business or goodwill of another
trader which can reasonably be foreseeable; and
Which causes actual damage to a business or goodwill of the
trader by whom the action is brought or in a quia time action will
probably do so.
CHARACTERISTICS OF PASSING OFF
ACTION
The infringer who directly by his action causes infringement or who uses or
contemplates or threatens to use a trademark infringing plaintiff’s right.
The master responsible for his servant’s act of infringement. For example, a
worker who is engaged in the business of making false labels is a servant of
the master who orders the making of such labels. It is the master in such a
case who is to be sued.
The agents of an infringer.
Directors and promoters of a limited company cannot be joined as co-
defendants unless they have personally committed or directed infringing
acts.
JURISDICTION:
• Held: The Hon’ble Delhi High Court held that the two
trademarks having appeared phonetically and visually similar
and the dimension of the two strips being practically the same
including the type of packing, the colour scheme and manner
of writing, it is a clear case of infringement of trade mark and
the ad interim injunction granted in favour of the plaintiff.
WHAT THE PLAINT SHOULD CONTAIN?
The pleadings must contain a clear and conscience statement of all material
facts relied upon by the plaintiff, but not evidence.
It should specifically allege what the defendant has infringed or threatened to
infringe in case of registered mark.
In case of passing-off, the plaintiff must specifically allege the wrong that has
been done to his goodwill or business and also the act of misrepresentation
committed by the defendant.
Particulars of the acts committed by the defendant which form the basis of
allegation must be given.
Where the fraud is desired to be raised, it must be clearly pleaded, and
particulars of fraud must be stated.
Where both the infringement and passing off are combined in the suit, the
plaintiff should state that by virtue of such user the mark has become
distinctive of his goods.
RELIEFS IN SUIT FOR PASSING-OFF AND
INFRINGEMENT
Accounts of Profit
Damages
Injunction
Section 135 (2) further provides for ex parte injunction or any interlocutory
order for any of the following matters, namely:-
For discovery of documents;
Preserving of infringing goods, documents or other evidence which are
related to the subject-matter of the suit;
Restraining the defendant of or dealing with his assets in a manner which
may adversely affect plaintiff’s ability to recover damages, costs or other
pecuniary remedies which may be finally awarded to the plaintiff.
INJUNCTION MAY BE OF FOLLOWING
TYPES