When we have some right there is always a possibility that it will be violated. Similarly, when we have a good reputation in the market there is a great chance that it will be infringed or misused by someone. Eventually, the two legal concepts emerge with respect to Trademark i.e. Passing Off and Infringement. In the field of trademark industry Passing Off and Trademark Infringement are two different concepts.
What is Trademark?
In lay man language Trademark is the identity of business, the mark by which the product is recognised for example the lady with long hairs and crown instantly creates a picture in our mind that it is associated with the Starbucks Coffee.
The legal definition of Trademark is given under the provisions of The Trademark Act, 1999 (herein after referred as Act).
As per Section 2 (zb) of the Act, “Trademark means a mark being capable of being represented graphically and which is capable of being distinguishing the goods or service of one person from those of others and many include shape of goods, their packaging and combination of colours.”
What is Passing Off the Trademark?
In simple terms, Passing Off means the illegal act of selling a product that is similar to one that another company has legally protected by a Trademark.
The definition of Passing Off is incorporated under Section 134 (1) (c) of Trademark Act as:
“For passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.”
What are the essentials to incorporate Passing Off?
- Reputation
- Misrepresentation.
- Degradation.
When the dispute of Passing Off arises?
When there is a false representation and out of which the goodwill of the existing company declining then there is a case of Passing Off.
What is Trademark Infringement?
When someone uses the trademark without the permission of trademark holder, it is known as Trademark Infringement.
Section 29 of the states as, “If a person uses a trademark that is registered by another corporation or individual and causes confusion in the eyes of the public, that person will be held accountable for trademark infringement.”
What are the essentials to attract Trademark Infringement?
- Registered Trademark.
- Unauthorized person
- Goods and services
- Identical mark
Landmark Judgement of Trademark Infringement
Starbucks v. Sardarbuksh Coffee & Co.
Facts of the case:
Starbucks registered its trademark in 2001 with a logo of “crowned maiden with long hair”, Sardarbuksh being a local vendor started his business with the name Sardarbuksh Coffee & Co. with a logo of a turban Commander along with wavy lines extending from the edges, slowly the business gained fame in the market and as a result the vendor in 2018 turned his company into a Private Limited Company with the name “Sardar Buksh Private Limited.” Everything was going well but Starbucks puts a case of Trademark infringement on Sardarbuksh for using similar mark and logo.
The court finds that the name is too long and creates confusion in the minds of customer as it is way similar to each other. As a result court ordered starbuksh to change its name to “Sardarji-Bakhsh Coffee and Co.” from “Sardarbuksh Coffee & Co”. Moreover a privilege is given to the defendant that if someone in future uses the name baksh he can sue for the same.
What are the differences between Passing Off and Trademark Infringement?
- Registration: The most important difference between Passing Off and Trademark Infringement is registration. If registered marks and services are infringed then the provisions of Trademark Infringement will apply whereas where the marks are not registered provisions for Passing Off will apply.
- Legal Provisions: Trademark Infringement has statutory provisions (definition, remedies etc.) under the Trademark Act, 1999 whereas passing off is not defined in statutory law.
- Essential Requirement: The only requirement to prove Trademark Infringement is to prove deceptive similarity whereas in passing along with the deceptive similarity it is also required to prove the confusion in the mind of public and likelihood of injury to the original Trademark holder’s goodwill.
- Jurisdiction: In Trademark Infringement suit will be initiated where the trademark user initially resides or carries out his business whereas in Passing Off the provisions of common law prevail.
- Scope: Passing off has wider scope of remedy than in the case of Trademark Infringement. (Lay down in the case of “S. Syed Mohideen v. P. Sulochana Bai.”
The difference between passing off action and Trademark Infringement action is explained in the case of Cadbury India Limited and Ors. V. Neeraj Food Products.
The honourable Delhi High Court laid down the following differences:
- An action for trademark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy.
- The use of the trade mark of the actual owner, by the second party, is also a requirement in the case of an action for infringement while it is not a necessity of an action for passing off.
- In an action for infringement of the plaintiff’s trademark, it is immaterial that the outfit, outer covering and other written marks on the goods begin from a different source than that of a registered proprietor’s trade mark. The liability of the defendant in such a case may be absolute. However, in case of passing off of trademark, the second party may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the original goods.
- In an action for infringement, the original owner on account of it being a registered trademark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit.
Conclusion:
It is essential to have law on Passing Off and Trademark Infringement as in any condition if someone thinks that the reputation he makes after years of hard work is misused then he can knock the door of judiciary to claim remedies. Simultaneously, if the registered Trademark of someone is used by some other person then also the remedies can be availed.