INFRINGEMENT AND PASSING OFF:
A. Statutory provisions:
Section 29 of The Trademark Act 1999 talks about various aspects related to infringement as given in S.29(1) that 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.
Other subsections describes that in course of the use of the trademark it is said to be infringing the rights of other company due to use of similar or identical trademark using for marketing of similar kind of goods and services or use of identical or deceptively similar trademark for any other kind of goods and services. It is further given in the Sub Section (9) of this section that the infringement can also be done by the spoken use of those words as well as by their visual representation.
In Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd. 35 (1999) PTC 540, Madras High Court, after holding the defendant’s mark “SPASMO-FLEXON” deceptively and phonetically similar to “SPASMO-PROXYVON”, summarised the law as follows:
1. The registered proprietor of a trademark has exclusive right to the use of 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 in manner provided by the Act.
Whether it is deceptively or has become publici juris is a question of fact to be established.
2. When a number of marks, all have a common element, may it be prefix, suffix or root, i.e. essential part or the core of the mark, they come to be associated in the public mind as an indication of the same source, which misleads or causes deception or confusion.
3. It is the common element that has to be identified in an impugned mark and the registered trademark and if such common element is highly distinctive and is not just a description or a commonly used word, the likelihood of deception or confusion would be very much there, despite the fact that it might differ in similarity in certain letters.
4. The nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.
5. Marks must be looked at from the first impression of a person of average intelligence and imperfect recollection.
6. Marks must be compared as a whole, microscopic examination being impermissible.
7. The broad and salient feature must be considered, for which the marks must not be placed side by side to find out the differences in design.
8. Overall similarity is the touchstone.
9. It is not the colour of the container or the difference of the product, but it is the statutory right to the word that has to weigh.
10. The plaintiff need not in general show prima facie case that is required to be shown must be something more than a case that will avoid the action being struck out as frivolous or vexatious and even if the chance of success at the trial are only twenty percent, the statutory protection is absolutely necessary by way of an injunction in order to prevent confusion or deception arising from similarity of marks.
M/S.Heinz Italia & Anr v. M/S.Dabur India Ltd. (2007) 6 SCC 1
Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (1998) 9 SCC 531
Wander Ltd. And Anr. vs Antox India P. Ltd. 1990 Supp (1) SCC 727
The specific description of passing off is not given in the trademark act but the courts have drawn its meaning from common law that if the infringement of trademark done in such a manner where the mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage for business of the company. Passing off is not defined in the Trademark Act, 1999. It is referred to in Section 27 (2), 134 (1)(c) and 135 of the Act. 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.
In Reckitt & Colman Products Ltd v Borden Inc.  1 All E.R. 873 Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd. (1979 AC 731, 742 (HL)) (the "Advocaat Case") to three elements:
Goodwill owned by a trader;
Damage to Goodwill;
Parallel to this, the Hon’ble Supreme Court of India in Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65 observed that the three elements of Passing off include:
Likelihood of damages to the Plaintiff.
T.V. Venugopal v. Ushodaya Enterprises Ltd. and Anr. [ (2011) 4 SCC 85]
Mahendra and Mahendra paper Mills v. Mahindra and Mahindra Ltd. [(2002)24PTC121]:
“In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000 (5) SCC 573, this court formulated the point whether the plaintiff had made out a case for grant of temporary injunction treating the suit as a "passing-off" action, the relative strength of the case was in the plaintiff's favour ? Referring to a number of decisions of this court and courts in England, this court made the following observations: 'Here the point is in relation to relative strength of the parties on the question of "passing-off". As discussed under Point 5, the proof of resemblance or similarity in case of passing off and infringement are different. In a passing-off action, additions, get-up or trade-dress might be relevant to enable the defendant to escape. In National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1948 AIR (Mad) 481, the passing-off action failed. But thereafter James Chadwick Co. succeeded in an appeal arising out of the registration proceedings and the said judgment was confirmed by this court in National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1953 AIR (SC) 357. It was held that the judgment in the passing-off case could not be relied upon by the opposite side in latter registrationproceedings.”
Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited (2010) 173 DLT 141 (DB)
III. SOME GENERAL DISTINCTIONS:
While statutory remedy is available for infringement, the action for passing off derives from common law. For infringement it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark but in the case of a passing off action, the need is to prove that the marks are identical or deceptively similar which is likely to deceive or cause confusion and damage to the business of the company. Passing off suits are useful where an action for trademark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark).
Compiled by: M/s. Arti Singh & Associates