Difference Between Passing Off And Infringement For a passing off action registration of trademark is not relevant. It is based on property in goodwill acquired by use of the mark. On the other hand infringement is based on statutory right acquired by registration of trademark. In case of a passing off action, the defendant's goods need not be same as that of the plaintiff, they may be allied or even different. In case of an action for infringement, the defendant's use of the offending mark may be in respect of the goods for which the mark is registered or similar goods. In the claims of infringement based on well known trade marks, the barrier of goods stands further diluted in view of the provisions of the Trade Marks Act, 1999. Another difference between the two is that in passing off action identity or similarity of marks is not sufficient, there must also be likelihood of confusion. But in case of infringement if the marks are identical or similar no further proof is required. In the case Durga Dutt Sharma V. N.P. Laboratories , a Supreme Court judgment, the difference between the two has been laid. It was held that " An action for passing off is a Common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark."
Difference between passing off and Infringement Author: Rahul Cherian A trademark is a recognizable sign, design or expression of products or services of a company by which it identifies itself from others and is granted to an individual, an organization or any legal entity. Thus trademarks help to distinguish one’s business from that of others and is a sign of goodwill and quality of the company. The first law related to trademarks in India was passed in 1940 and before that the protection of trademarks in the country was governed by the common law principles based on English cases. The concept of ‘Passing off’ is based on the common law principle and the damages claimed for in an action for passing off is unliquidated in nature. It is based on the principle that “a man may not sell his own goods under the pretense that they are the goods of another man.” However, it has not been defined by any law in India. It has only been referred to in Section 27 (2), 134 (1)(c) and 135 of Trademark Act, 1999. Section 27 (2) states that the rights of action against any person for passing off as the goods of another person or the remedies in respect thereof are unaffected by the provision of the Act. Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out of the use of any trademark. Section one 135 specifies the remedies available in respect of passing off arising from the use of a trademark. It is a concept of tort which has undergone major changes in the course of time. In order to successfully establish passing off 3 elements have to be proved and fulfilled. They are goodwill, misrepresentation and damage. It was laid down by the House of Lords in Reckitt & Colman vs. Borden. The plaintiff must: • establish a goodwill or reputation attached to the goods and services which he supplies in the mind of the public. • demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by him are the goods and services of the plaintiff. • demonstrate that he suffered or is likely to suffer damage as a result of the false belief created by the defendant’s misrepresentation that his goods or services are the same as those offered by the plaintiff. In a passing off action, damage is presumed even if there is likelihood of deception. Only if these 3 requirements are successfully met then the plaintiff can claim for action for passing off. On the other hand, infringement of a registered trademark occurs when another party uses the trademark that is same or is deceptively similar to the registered trademark for identical/similar goods so as to create confusion to the public. Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate legal proceeding to prevent or recover damages for the infringement of a registered trademark. Further section 28 of the Act provides that the registration of a trademark gives to the proprietor of a registered trademark an exclusive right to use the trademark in relation to the goods and services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark. The section 29 of the Act provides for the essential requirements so as to constitute an infringement. They are as follows:
The plaintiff’s mark is registered and that the defendant’s mark is identical with, or deceptively similar to plaintiff’s registered mark.
The defendant has taken any essential feature of the mark or has taken the whole of the mark and then made a few additions and alterations to it and that defendant’s use of the mark is in course of the trade in respect of goods/services covered by the registered trademark.
The use of the infringing mark must be printed or usual representation of the marking advertisements, invoices or bills and use by the defendant is in such manner as to render the use of the mark likely to be taken as being used as a trademark. Any oral use of the trademark is not considered to be an infringement.
Thus, registration of a trademark is irrelevant in case of an action for passing off. However, infringement is based on the statutory right acquired only by the registration of the trademark. The apex court has laid down the difference between the action of passing off and that of infringement in Durga Dutt Sharma V. N.P. Laboratories. It held that an action for passing off is a Common Law remedy based on deceit where a person tries to pass off his goods as those of another whereas an action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the clearance of the exclusive right to use the trade mark.
Delhi HC on remedies pertaining to trademark infringement and passing off by Mathews P. George June 26, 2011 3 Comments
In its judgment in M/S Mahashian Di Hatti Ltd. vs Mr. Raj Niwas, Proprietor of MHS, the Delhi High Court re-affirmed the differential evidentiary standards prescribed for trademark infringement and passing off. FACTS The plaintiff uses the registered logo, MDH within three hexagon device on red colour background, in its business of manufacturing and selling spices & condiments. The aforesaid logo has been in use since 1949 in respect of various products such as “Kashmiri Mirch” and “Kasoori Methi”. Registered since 31st May, 1991, the plaintiff attributes its goodwill and reputation to the long and continuous usage of the mark, various publicity programs and quality of products. In the instant suit, the plaintiff contended that the logo used by the defendant, MHS within hexagen device with red colour background, was similar to its logo. The plaintiff, therefore, sought injunction restraining the defendant who was also engaged in the same business from using the infringing logo MHS or any other trademark identical or deceptively similar to its MDH logo. The defendant inter alia tried to blunt these arguments by contending the phonetic dissimilarity between MDH and MHS. JUDGMENT As per Section 29(1) of Trade Marks Act, 1999, a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
Relying on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, Court distinguished the remedies pertaining to trademark infringement and passing off. In an action pertaining to trademark infringement, the statutory right of the owner of the registered trade mark would be infringed when the mark used by the defendant was visually, phonetically or otherwise similar to the registered trade mark of the plaintiff. The plaintiff just had to prove that the trademark adopted by the defendant substantially resembled its trademark on account of extensive use of the main features present in his trademark. Even if the defendant proved that the consumer could distinguish his products from that of the plaintiff, he would still be held liable for infringement of the registered trademark. On the other hand, in case of passing off, if there was a possibility for distinction of goods by the consumer, the defendant would not be held liable.
In the instant case, the Court compared the logos of the plaintiff and the defendant and inter alia discerned the following similarities: a) as in the logo used by the plaintiff, the defendant used three hexagons for framing its logo; b) the letters of both MDH and MHS were written in white colour and (c) As in MDH, the background colour in MHS was red. In the light of above similarities, Court concluded the presence of strong visual similarity in spite of weak phonetic similarity. Further, it was also noted that both the parties were engaged in the same business of manufacturing and selling spices. Thus, the registered trademark of plaintiff was held to be infringed by the defendant. The defendant was, therefore, restrained from manufacturing, selling or marketing any spices or condiments using the impugned logo MHS or any other trademark which was identical or deceptively similar to the registered trademark of the plaintiff.
Significantly, the Court awarded punitive damages amounting to rupees one lakh in the instant case. Citing various case laws, the Court inter alia observed that punitive damages were governed by principles of corrective justice. The Court, further, noted that if punitive damages were not awarded in cases like the instant one, it would encourage unscrupulous individuals / companies to take unfair advantage upon the goodwill and reputation of others.