DIFFERENCE BETWEEN INFRINGEMENT AND PASSING OFF UNDER TRADEMARK ACT.

INTRODUCTION

 A trademark is defined by the Trademarks Act of 1999 as something that can be visually represented and is able to set one person’s goods or services apart from another. This can include how the products are shaped, how they are packaged, and how the colours are combined. The mark must be distinctive in order for consumers to be able to distinguish one trader’s goods from those of rivals. Devices, brands, headings, labels, tickets, names, signatures, words, letters, and numerals, shapes of goods, packaging, or colour combinations, either singly or in combination, are a few examples of items that may be deemed trademarks.

Meaning of infringement of trademark:

  The term “trademark infringement” describes the infringement of a registered trademark owner’s legal rights as specified in sections 28 and 29 of the Act. These rights give the registered owner the ability to sue any rival retailer, especially if the registered mark is used in conjunction with comparable or exact goods and services. Crucially, in order to enforce these rights, the Act does not require that the mark have been used previously. This means that, even in cases where the registered mark has not been used in the market before, legal action may still be taken to stop the use of competing marks.

Meaning of passing off of Trademark:

  Trademark passing off is a separate legal concept. It involves someone pretending that their goods belong to someone else, which is against the law. The idea of passing off is distinct and unaffected by any possible contradictions or overlaps with Trademarks Act provisions. Passing off is the idea that no one is allowed to present their goods as those of another person, and no one is allowed to use a mark, symbol, device, or sign that may lead to such misrepresentation. This idea was well-established in the Singer Manufacturing Co. v. Loog (1880)18 Ch. D 395 case.[1]

Difference between Trademark and passing off:

Points of differences	Infringement	Passing off
1.     Registration of Trademark	Trademark provide protection for registration of goods and service.	Passing off provides unregistered of goods and service.
2.     Action	Trademark infringement is essential for a defendant to use trademark of plaintiff to bring an action against them.	Passing off not essential for a Defendant to use trademark of Plaintiff to bring an action against them.
3.     Remedy	Trademark infringement has statutory remedy under the section 29 of trademark Act 1999	Passing off has common law remedy.
4.     Burden of proof	Trademark Infringement the burden of proof lies on the Plaintiff.	Passing off the burden of proof lies on the person who uses the trademark without others consent i.e., defendant
5.     Essential	Infringement registration terms to be essential.	Passing off has goodwill. Damages and misrepresentations terms to be essential.
6.     Section	Infringement of trademark suits can be solved under the section 134 of Trademark Act 1999.	Passing off suits can be solved under section 20 of civil Procedure Code 1908.

The famous case laws which highlight the differences between Infringement and Passing off are:

1.  Listen Ltd v/s Harley.

In this case, he opined that if you are restraining the infringement of a registered mark, you can restraint the man from using the mark, but if your restraint him from selling the article under the same label word which plaintiff or another person has been using without differentiating it from the Plaintiff’s good, then it is a different thing.[2]

2. S. Syed Mohideen v. P. Sulochana Bai

 In this case, both the appellant and respondent were the registered owner of ‘Irrutukadai Halwa’ but the respondent proved in the Supreme Court that it is not just about the use of trademark but it has become a household name for her family as they have been selling this halwa since the 1990s and have a different reputation to which court said that as it has become the Goodwill of respondent thus no one can use this particular trademark and it was also observed that passing off right is a broader remedy than trademark.[3]

Precedent Case laws:

Infringement on dissimilar goods

1.  In Brahmos Aerospace Pvt. Ltd. V. FIIT JEE Limited, 2014 (58) PCT 90(Del).,[4] the court stated that if the registered trademark is a well-known trademark, the same can be protected even in relation to dissimilar goods used by the defendants. The registered trademark BRAHIMOS was a registered trademark which was associated in the substantial segment of public as the same was being used for supersonic missile in the aerospace industry. The defendant who was using BRAHMOS for providing educational training and programmes were prevented from using this trademark.
2. Tata sons ltd. V. Atul Tiwari, 2012 (50) PTC 528 (Del). the court held that the trademark TATA was well known trademark and therefore, the use of mark TATA by the defendants on their business constituted infringement within the meaning of section 29(4) of the Act.

Infringement on advertisement

1.  Compaq V. Dell, (1992) FSR 93., the computers published an advertisement claiming that their home computers functioned similarly to “Compaq” computers but were cheaper. Their claim’s function was untrue in various important details. The court found it to be an Infringement and granted interlocutory relief in respect of injurious falsehood.

A registered trademark is not infringed

1.  Orchid Chemicals & Pharmaceuticals Ltd. V. Wockhardt Ltd., 2013 (56) PTC 558 (Mad)(DB) the court stated that section 30 limited the effect of registered trademark. A perusal of section 30 would show that section 29 is subject to it. Section 30, therefore is an overriding provision to section 29 of the Act. The court exemplified the provision by stating that in a case where a party was using registered trademark belonging to another one, if it was in accordance with honest practices in industrial or commercial matters or was detrimental to the distinctive of trademark. The court further stated the section 28 to 30 have to be read in connection with each other to understand the intending purpose and object. 

  Use of registered trademark as tradename [ section 29(5) ]

1. Health & glow retailing Pvt, Ltd. V. Dhiren Krishna Paul, 2007 (35) PTC 474 (Mad) p.508. the court held that apart from providing a safety valve in section 35 itself, by using the expression “confide use “and “confide descriptions “ , one more safeguard is been provided under section 29(5) of the Act against infringers who seek to take advantage of the saving provision

Registration is no defence to passing off action

1. N. R Dongre V. Whirlpool Corporation AIR 1995 Delhi 300, It is also been decided in supreme court (1996)5 SCC 714
2. Gorbatschow wodka KG V. John Distilleries Limited 2011 (47) PTC 100 (Bom) at p.220

Passing off of Domain Name

1. Satyam infoway ltd V. Sifynet Solutions (P) Ltd, (2004)6 SCC[5] 145 at pp. 150-151, the supreme court was considering the issue of whether the principles of trademark law in particular those relating to passing off apply to domain name. The court held that an action for passing off, as the phrase “passing off “itself suggest is to restrain the defendant from passing off the goods or services to the public as that of the plaintiff.

Conclusion:

From a business perspective, trademark protection is essential, as is shielding customers from dishonesty and fraud. It is possible to use the passing-off action with unregistered goods and services. Comparing passing off to trademark infringement, the former has a narrower scope. Whether or not the trademark is used, the registered proprietor may file a lawsuit for infringement. A trademark suit, as opposed to a reputation suit, is known as an infringement action.

Endnotes

1. (1880)18 Ch. D 395
2. Listen Ltd v/s Harley.
3. Syed Mohideen v. P. Sulochana Bai
4. 2014 (58) PCT 90(Del)
5. (2004)6 SCC