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PASSING OFF OF TRADEMARKS IN INDIA

 

INDIAN IP LAWS

  PATENTS
TRADEMARKS
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INFRINGEMENT & PASSING OFF OF TRADEMARK
 
Infringement of Trademarks
Passing Off of Trademarks
Difference between Infringement & Passing Off
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What amounts to Passing off in India?

 

Passing off of a Trademark in India is a tort actionable under common law and mainly used to protect the goodwill attached with the unregistered trademarks. It is founded on the basic tenet of law that one should not benefit from the labour of another. Section 27 of the Trade Marks Act, 1999 provides that no infringement action will lie in respect of an unregistered trade mark but recognizes the common law rights of the trade mark owner to take action against any person for passing off their goods/services as the goods of another person or as services provided by another person. It has been settled in catena of authorities that essential characteristics of a passing off action are as follows:

  1. Misrepresentation;

  2. Made by a person in the course of trade mark;

  3. To prospective customers of his or ultimate consumers of goods or services supplied by him;

  4. Which is calculated to injure the business or goodwill of another trade;

  5. Which causes actual damage to a business or goodwill of the trade by whom, the action is brought or well probably do so.

In a typical suit for Passing off, the Courts generally frame following issue / questions for consideration and determination:-

  1. Whether the Plaintiff is prior user of the mark in point of time.

  2. Whether the goods of the Plaintiff have acquired distinctiveness with any name or mark and are associated in the minds of the general public as those of Plaintiff.

  3. Whether there is a misrepresentation by the Defendant with regard to his goods and such misrepresentation is likely to lead to confusion in the minds of the people as a result whereof they may treat the goods of the Defendant as those of the Plaintiff.

The Courts generally consider the following factors in order to determine and adjudicate aforesaid issues;

  1. The nature of mark i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and labels works.

  2. The degree of resembleness between the marks, phonetically similar and hence similar in idea.

  3. The nature of the goods in respect of which they are used as trade marks.

  4. The similarity in the nature, character and performance of the goods of the rival mark.

  5. The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a decree of care they are likely to exercise in purchasing and/or using the goods.

  6. The mode of purchasing the goods or placing orders for the goods.

  7. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.


For more information on Passing Off of trademarks in India please write to us at: info@ssrana.com


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