Hello friends, today we will discuss the topic PASSING OFF widely used in context to the intellectual property rights. Passing off can be used to enforce unregistered trademark rights. It basically prevents a person from misrepresenting his goods or services as that of the other person who has attained reputation in the market. Earlier this concept was confined to goods later on it extended to cover services as well. This concept is ever changing and hence is based on the principle of dynamism as opposed to the static theory.
Earlier this concept was based
on principle of deceit however as the time passed, it has been observed that passing
off is applicable even when there is no intention to deceit.
Therefore even if a person in good faith adopts a mark of someone else, then also it amounts to passing off. Earlier in the
absence of deceit there was no action for passing off but later in the 19th
century even such action came to be governed under passing off.
The advocaat case 1980 --- specific drink made from the mixture of egg and spirit. It was observed that the product later on made by the defendant company by using similar composition was subjected to passing off and hence it was regarded as the expansion of the theory of passing off. The five elements that constitutes to passing off, which have been narrated in the above mentioned case are :
a. Misrepresentation;
b. Made by a person in course of trade;
c. To prospective customer or ultimate customer;
d. Calculated to injure the goodwill of business of the other.
e. Causes actual damage to a business or goodwill
Passing off and Disparagement
Although Passing off and
disparagement are both the genus of of unfair competiton but both the concepts are different. In case of passing
off defendants represents his goods as goods of the plaintiff but in case of
disparagement he does not do any of this sort but to the contrary shows its
goods as superior to that of the plaintiff.
Passing off----common filed of
activity no longer a criteria
Earlier based upon the decisions
held in various cases, it was assumed that concept of passing off was
restricted to the class of goods belonging to the same class and in the same line
of business. However with the passage of time and upon the constant evolution
of this concept, it was observed that even if the goods of the defendant are
dissimilar and belonged to the separate category all together, even then the action
initiated by the users of the well known trademarks for passing off is held to
be maintainable in the light of equitable justice.
For example, in one case plaintiff
was manufacturing pharma products and later on dietary substance was prepared
by defendant using the similar mark causing confusion to the general public as
to the origin of the said goods. It was held that even though goods of
defendant are not same as that of plaintiff but still it amounts to passing
off.
Similarly in Volvo Case,
Bombay High Court, in one case granted injunction in favor of Volvo selling
buses against defendant who was engaged in selling steel bars under the same
name, thereby expanding the concept of passing off.
In another case, Mahindra and
Mahindra filed a case against the defendants using the same name for
selling of paper products The case went to the supreme court and it was recognized
that in respect of well known marks, the court of equity will grant injunction
to prevent identical or even totally dissimilar goods as well under the head of
passing as common law right.
The same principle was further
reiterated by Delhi High Court in a case where the owners of mark Mercedez Benz
was successful in restraining some other person who had adopted a similar mark in
respect of undergarments. The court granted injunction restraining use of Mercedes
Benz or any other deceptively similar mark. It was put forward by the owners of
the original mark of Mercedes that in case the defendants are not stopped, in
such an event it might cause other persons to adopt the similar mark for other
products in the market which shall be detrimental to its goodwill and
reputation.
Difference between infringement
and passing off
Infringement lies in case of
registered mark whereas passing off can be initiated even without registration.
For infringement only thing which
need to be shown is the registration of the mark while in passing off you have
to show the reputation and goodwill.
Passing off is a wider concept
as compared to infringement.
I hope this article was helpful to understand the basics of passing off. For any query, feel free to write in the comment section.
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