According to the Trademark Act 1999, a trademark denotes a mark qualified for representing a brand. Also, it helps with distinguishing the products or services of one person from the competent and may retain the shape of product, packaging and colour combination. But, what is passing off and infringement of the trademark. Well, it is something really important, you should know about if you care about brand identity.
Trademark is a logo, emblem, formatting, term, image or something which differentiates one product from another similar product.
Most importantly, trademark registration is very crucial to protect your brand identity.
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What is Passing off the Trademark?
It is creating some false representation that is likely to lead someone to believe that the goods or services are those of someone else.
In layman terms, passing off occurs when a trader/businessperson/or another person makes a false representation to their customer or consumer to lead them in believing that the goods or services they are delivering are the property of another person.
The Law of Passing-Off, which covers Intellectual Property Rights in India, was created to prevent this conduct.
Section 134 1 (c) of the Trademark Act 1999 establishes the law of passing off.
A common law remedy is provided by Section 27 of the Trademark Act 1999.
Unregistered trademark rights are subject to this common-law tort ( a trademark that has not been registered under a trademark or patent office is known as an unregistered trademark).
The law of passing off prohibits one person from impersonating another’s goods or services.
The concept of passing off was not very broad at first, and it has evolved significantly over time. The rule of passing off was originally solely applicable to products. That no single person may misrepresent the goods of others.
At a later time, this was extended to include goods, businesses, and services. Passing off was then expanded to include professions and non-trading activities.
In today’s world, it also refers to unfair commerce and unfair competition in which one person’s actions harm another person’s or group of people’s goodwill.
The basic question in passing off law is whether a person’s actions are intended to deceive the public or to cause confusion between two business activities.
When does Passing Off arise?
Passing off arises when there are false claims and harm to the existing reputation or goodwill of the owner.
What is necessary for a Passing Off action?
In a Passing off action, the user must prove that the trademark they are using has a distinct identity for the product. However, if someone uses the same thing, it will create confusion in the minds of people and will cause harm to their business reputation.
Features of Passing-Off
There are three main features of passing off the trademark:
- Reputation
- Misrepresentation
- Deterioration
Accordingly, a complainant must prove:
1. Their products or service have goodwill.
2. They should prove that the other party is making a false representation.
3. Also, they should demonstrate that they have incurred a loss due to the party’s false claims.
Other Features of Passing-Off the trademark
- If someone creates misrepresentation in the business to future clients of their ultimate customers of products or services in trade by them.
- To damage the reputation of another individual’s enterprise.
- Provokes actual impairment to the complainants business reputation.
Infringement of Trademark
When a person uses a trademark or service mark without permission, it is trademark infringement. As previously indicated, passing off applies to unregistered trademarks, while trademark infringement applies to registered trademarks.
Trademark infringement mentions in Section 29 of the Trademark Act of 1999. It states that if a person uses a trademark that is registered by another corporation or individual and causes confusion in the eyes of the public, that person will be held accountable for trademark infringement.
Feature of Trademark Infringement
Unauthorized individual
It denotes a person who is not the owner of the registered trademark.
Identical or Deceptively Identical
The examination for deciding whether marks are similar or not is by finding whether there is a possibility for a probability of chaos among the public.
If the consumers are probable to confuse among the two marks, there is an infringement case.
Registered Trademark
You can only violate a registered trademark. For an unrecorded Trademark, the standard law idea of passing off will involve.
Goods/ Services
To prove infringement, even the goods/ services of the person must match or be similar to the goods that the trademark denotes.
Any unauthorized use of the complete statutory ownership of a registered trademark includes a breach.
The infringement explained above is direct infringement. There is another aspect to trademark infringement in India, i.e. indirect infringement.
Difference between Passing Off and infringement.
1. Trademark protects documented products and services, whereas Passing Off shields unregistered products and services. It is one of the most crucial dissimilarities between Passing Off and trademark infringement. However, the fact here is that the treatment in both Passing Off and trademark infringement is similar.
2. The other dissimilarity between Passing Off and trademark infringement is that in Passing off, the person does not have to use the trademark of the complainant to obtain an act of passing off. But, trademark infringement is not the same.
3. In the case of trademark infringement, the burden of proof lies on the user.
4. Passing off is a standard law remedy, whereas Trademark infringement is a statutory therapy.
5. For trademark infringement, prosecution under criminal law is easy comparing to the case of Passing off.
6. For the case of Passing off, the treatment has to be sought underneath Section 20 of Civil procedure code 1908, on the other hand, trademark infringement cases can resolve under Section 134 of the Trademarks Act 1999.
7. Registration is important for trademark infringement, whereas for passing off, reputation, damage, misrepresentation is vital.
Conclusion
The Law of Passing-off and infringement is very important for the reputation and goodwill of one’s business. If any person finds that his trademark registered or unregistered is being misused he/she can directly approach the court. A registered trademark is the property of the company. Also, it directly associates with Goodwill, reputation and quality of products. No one can use the same trademark which is in use by other companies. In the same way, passing off arises when it injures the Goodwill of one’s business when there is misrepresentation and thirdly in the damages. The remedy provided in both the cases that are in the case of passing off and infringement is generally the same.
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