Why Passing Off Necessary
Object of Passing Off
- Goodwill need to be established by the person seeking benefit for passing off action
- There must be deceptive similarity in the products in question.
- The party asking for remedies for passing off might incur losses/ damages due to such action of passing off by other party
Elements of Passing Off Action
- According to Kerby’s Law of Trade Marks and Trade Names (9th edition, para 838): Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that which he was acquainted.
- In a case titled as Delco Engg. Works V/s General Motors ILR(1974) I P & H 502, in which the principles governing the passing off action were enumerated. “ That an action for passing off is founded on the desirability of preventing commercial immorality or dishonesty on the part of the trader… who falsely represent that his goods are the goods of someone else. The whole thing has to be approached from the point of view of a man of average intelligence and of imperfect recollection.
- In case titled as MilmetOftho V/s Allergan Inc,(AIR 2004 SC 3355), the apex court held that in a passing-off action for deciding the question of deceptive similarity exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products.
- In the matter CADILA HEALTH CARE LTD. Vs CADILA PHARMACEUTICALS (2001 5 SCC 73), the apex court observed that public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore be life threatening, not merely inconvenient. Broadly stated, in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
- The nature of the marks i.e whether the marks are word marks or label marks or composite marks i.e. both words and label marks.
- The degree of resemblances between the marks, phonetically similar and hence similar in idea.
- The nature of goods in respect of which they are used as trade mark.
- The similarity in the nature, character and performance of the goods of rival traders.
- The class of the purchasers who are likely to buy the goods bearing the marks they require, or their education or intelligence and a degree of care they are likely to exercise in purchasing goods.
Loss due to passing off
Q1: What is passing off in trademark law?
Passing off is primarily an actionable wrong, or an infringement, under the common law of trademarks. It refers to the unauthorized use of a similar trademark, trade name, or get-up that may mislead consumers into believing that the goods or services offered by one party are associated with or endorsed by another party. Passing off allows the original business to seek legal remedies to protect its goodwill and reputation from being harmed by such deceptive practices.
Q2: How do you prove your claim against passing off?
To prove your claim against passing off, several elements must be established. These include demonstrating the existence of goodwill associated with the trademark, establishing deceptive similarity between the infringing and original goods/services, and showing actual or potential loss or damages suffered as a result of the passing off.
Q3: What is the difference between passing off and trademark infringement?
Passing off and trademark infringement are distinct legal claims. Passing off is the misrepresentation of a trademark by third parties, either registered or unregistered. On the other hand, trademark infringement is concerned with unauthorized use of a registered trademark. Passing off can apply to both registered and unregistered trademarks, while trademark infringement is specific to registered trademarks.
Q4: Can an unregistered trademark claim passing off?
Yes, an unregistered trademark can claim passing off protection. Although registration provides additional benefits and stronger legal grounds, passing off can be used to protect unregistered trademarks as well. The claimant must demonstrate the existence of goodwill, deceptive similarity, and actual or potential damage caused by the passing off.
Q5: How can I prevent passing off of my brand or products?
To prevent passing off, there are several proactive measures you can take. First, establish a strong and recognizable brand identity through consistent branding and marketing. Regularly monitor the market for potential infringements and take prompt legal action if necessary. Consider registering your trademark to obtain stronger legal protection and deterrent against passing off.