Differences between infringement and passing off action

Section 29(8)-any unauthorized advertisement of the registered trade mark if such advertisement-

(i) Take unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

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(ii) Is detrimental to its distinctive character; or

(iii) Is against the reputation of the trade mark. This refers to comparative advertisement.

Section 29(9) – unauthorized oral use of words which constitute distinctive elements of a registered trade mark.

Passing off- Passing off is a form of tort. The law of passing off, based on common law, has remained substantially the same over more than a century though its formulation has changed over the time. The object of this law is to protect the goodwill and reputation of a business from encroachment by dishonest competitors.

‘No man is entitled to represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is ultimate customer’.

To put it in shortly, it is an actionable wrong for any person to pass off his goods or business as and for the goods or business of another person by whatever means that result may be achieved. The law of passing off has been extended to professions and non-trading activities.

The nature of the property protected in passing off cases is goodwill which has become attached to the plaintiff’s business, the name, mark or get-up being the badge or vehicle for the goodwill.

Thus an author, playwright or film scriptwriter can claim goodwill in a fictional character and a film producer who has a license to use the story creating the character can build up a goodwill which may be protected in a passing off action even though he may not be the owner of the copyright.

The basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may have been made in express words which is rather rare.

The more common case is where the representation is implied in the use or imitation of a mark, name or get-up with which the goods of another are associated in the minds of the public, or a particular class of public.

In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with his goods of the mark, name or get-up in question represents such goods to be the goods of the plaintiff, or the of the plaintiff or a particular class or quality, or, as it is sometimes whether the defendants’ use of such mark, name or get-up is calculated to deceive the representation need not be made fraudulently.

The principle of the law of passing-off has been extended and applied p many kinds of businesses other than trading business in the ordinary 5enses. Damages or likelihood of damage to goodwill is the gist of all such actions.

The broad principle of passing off is ‘in the interest of fair trading and in the interests of all who may wish to buy or sell goods, the law recognizes that certain limitations upon freedom of action are necessary and desirable.

In some situations the law has had to resolve what might at first appear to be conflicts between competing rights.

In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather to the straightforward principle that trading must not only be honest but must not even unintentionally be unfair’.

The law of passing off can be summarized in one short general proposition that no man may pass off his goods as those of another.

More especially it may be expressed in terms of elements which the plaintiff in such an action has to prove in order to succeed. Those are three in number.

First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up.

Secondly, he must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.

Thirdly, he must demonstrate that he suffers, or in an action that he is likely to suffer damage by reason of the erroneous belief that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff. The principles referred to is known as trinity: goodwill, confusion and damage.

The remedies in passing off action includes an injunction, damages or an account of profits and delivery-up of the offending article for ensure or destruction.