Passing off Vs Infringement Under Trademark

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What is meant by “Passing off” of Trademark?

Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off is an actionable wrong.

The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842)).

Passing off is used to protect or safeguard the goodwill attached to an unregistered trademark. When the trademark has been registered by the owner and infringement happens, then it becomes a suit for infringement, but if the trademark has not been registered by the owner and infringement happens then it becomes a case of passing off.

Elements of Passing off:

There are three basic elements of passing off. The three elements are also known as the Classical Trinity, as restored by the House of Lords in the case of Reckitt & Colman Ltd v Borden Inc.

  1. Reputation
  2. Misrepresentation
  3. Damage

Modern elements of Passing Off:

In the case Erven Warnink Vs. Townend 3 , Lord Diplock gave the essential modern characteristics of a passing off action. They are as follows: –

  • Misrepresentation
  • Made by a person in the course of trade
  • To prospective customers of his or her ultimate consumers of goods or services supplied by him or her
  • To injure the Goodwill of another person’s business
  • Causes actual damage to the plaintiff’s business Goodwill

Why Passing off is necessary?

The Trademark is providing protection to registered goods and services, but the passing off action is providing a protection to unregistered goods and services.

When the passing off arise?

The passing off action is arise when there is misrepresentation, when it is harm the existence plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the business of another trader and which cause actual damage to the business or goodwill of the trader by the whom action is brought.

Penalty for passing off?

  • Section 104 prescribes the penalty for selling goods with a false trademark. Any person who sells, let’s for higher or has in his possession such infringing goods with a false trademark is liable to get punishment. This punishment shall not be less than six months and can extend to 3 years. The fine can be anywhere between ₹50,000 to ₹2,00,000
  • Goods can also forfeit by the court 
  • For a company conviction for such offence, every person in charge of the business shall deem guilty of the offence.

Difference between Passing Off and trademark infringement:

  1. Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services.
  2. In Passing off it is not essential for the defendant to use the trademark of the plaintiff to bring an action of passing off but in trademark infringement, it is not the case.
  3. Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
  4. For trademark infringement registration is essential whereas for passing off Goodwill, damage, misrepresentation is essential.
  5. For trademark infringement prosecution under criminal remedy is quite easy as compared in the case of Passing off.
  6. For the case of Passing off, the remedy has to be sought under Section 20 of Civil procedure code 1908, whereas trademark infringement suits can be solved under Section 134 of the Trademarks Act 1999.

Note: This Post was last updated on May 14, 2021

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Sunita

Founder & Director | COO & CHRO at eTaxFinance | Content Writer at eTaxFinance Blog | Department Head for Intellectual Property & Startup Team | Head-Corporate Strategy and Planning