NATIONAL LAW INSTITUTE

UNIVERSITY
BHOPAL , M.P.

A Project of Law Of Patents and

Trademarks on the topic
Passing Off And Infringement

Submitted to, Submitted by,

Prof.Monica Raje Ajita Nadkarni
 2012 BA LLB 101
ACKNOWLEDGEMENT

I would take this opportunity to acknowledge the roles played by all the people in helping me
to successfully make this project. I would thank my parents who act as my pillars of strength
in all situations. I would also thank Monica Raje Madam who guided me in completion of my
project.
 TABLE OF CONTENTS

1.Introduction

2.Passing off

3.Elements to be proved for passing off

4.Characteristics of passing off

5.Issue in passing off action

6.Factors to be considered

7.Defences to passing off action

8.New facet of passing off

9.Infringement of trademark

10.Infringement-Various factors

11.Who can sue for infringement?

12.Who can be sued?

13.Jurisdiction

14.Period of limitation

15.Issues in infringement suit

16.Evidence in infringement suit

17.Acts not constituting infringement

18.Case analysis on infringement

19.What plaint should contain?

20.Reliefs in passing off and infringement

21.Differences between passing off and infringement

22.Combined action for infringement and passing off

23.Conclusion

24.References
Introduction:

A trademark in relation to goods conveys to the general public and specifically to the
consumers about the origin and quality of those goods, thereby acquiring reputation in the
course of business and time. Therefore the concept of a trademark is the foundation of one’s
business to distinguish from others. A good trademark is often the best salesman of the goods
and is a visual symbol of goodwill and stamp of quality.

Every businessman who has spent considerable amount of money making his mark popular
will try to secure it from usage by unscrupulous competitors. Protection of trademark is
important not only from the business point of view but also for the protection of consumer
from fraud and imposition.

The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair
trade in every way and aims to foster and not to hamper competition, it also provides that no
one, especially a trader, is justified in damaging or jeopardizing another’s business by fraud,
deceit, trickery or unfair methods of any sort. This necessary precludes the trading by one
dealer upon the good name and reputation built up by another.

The first Trademark legislation was enacted in India in 1940, but before that, protection to
trademarks in the country was governed by the principles of common law based on English
cases. The law relating to protection of this form of industrial property is intricate and
complex. The reputation of a business symbolized by a mark, under common law, can be
protected only by an action for Passing off. Registration of a trademark under the Trade
Marks Act of 1999 gives statutory rights and slight infringement of it can invite an action for
Infringement. However, even the unregistered trademarks are also protected as the Act itself
provides that an action of passing off remedy is available for unregistered trademark.

Passing Off:

Passing off action is based on common law principle. The damages claimed for in an action
for passing off is “un-liquidated damages”. The action against passing off is based on the
principle that “a man may not sell his own goods under the pretence that they are the goods of
another man.” Similar view has been held in ICC Development (International) Ltd. vs. Arvee
Enterprises that “the passing off action depends upon the simple principle that

Nobody has any right to represent his goods as the goods of somebody else”. In a passing off
action, the priority in adoption and use of trade mark is superior. Passing off is not defined in
the Trademark Act, 1999. It is referred to in Section 27 (2), 134 (1)(c) and 135 of the Act.

Section 27 (2) states that the rights of action against any person for passing off as the goods
of another person or the remedies in respect thereof are unaffected by the provision of the
Act. Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out
of the use of any trademark. Section one 135 specifies the remedies available in respect of
passing off arising from the use of a trademark. Passing off cases are often cases of
“deliberate and intentional misrepresentation, but it is well settled that fraud is not a
necessary element of the right of action and the absence of the intention to deceive is not a
defence in an action for passing off though proof of fraudulent intention may materially assist
a plaintiff in establishing probability of deception.”

The concept of passing off which is a form of tort has undergone changes in the course of
time. At first it was restricted to the representation of one’s goods as those of another. Later,
it was extended to business and services. Subsequently, it was further extended to professions
and non-trading activities. Now a days, it is applied to many forms of unfair trading and
unfair competition where the activities of one person cause damage or injury to the goodwill
associated with the activities of another person or group of persons.

The law of passing off applies whenever there is the prospect of confusion between marks
and getup or where there is the prospect of confusion of identity through the unauthorised use
of similar marks or get-up. It is because the main consideration of passing off is whether
deception or confusion is likely to arise, passing off can be used to protect any kind of
distinctive name, mark, logo or get-up used to identify a company or business as well as
products or services.

Elements to be proved for passing off action:

In Reckitt & Colman vs. Borden4, their Lordships used the term “classical trinity”, for
goodwill, misrepresentation and damage, which are the three elements of the tort of passing
off.

1. Goodwill:- the Plaintiff has to establish a goodwill or reputation attached to the goods and
services which he supplies, in the mind of the purchasing public by association with the
identifying get-up under which his particular goods and services are offered to the public as
distinctive specifically of his goods or services.

As Lord Macnaghten has stated: “Goodwill is the benefit and advantage of a good name,
reputation, and connection of a business. It is the attractive force which brings in custom. It is
the one thing which distinguishes an old established business from the new established
business at its first start. The goodwill of a business must emanate from a particular center or
source. However, widely extended or diffused its influence may be, goodwill is nothing
unless it has power of attraction sufficient to bring customers home to the source from which
it emanates.”

Goodwill is thus the benefit and advantage of a name and get-up, and it is the attractive force
which brings in business. A passing off action is a remedy for the invasion of a right of
property in the business or goodwill likely to be injured by any actionable misrepresentation,
not in the name or get-up itself. Goodwill need not be established in the mind of every
member of the relevant public, but in a significant section of it.A reputation generated among
a very few people will not do. There must be a substantial number of potential customers
although not necessarily a majority.

The action of passing off lies where there is a real possibility of damage of goodwill to some
business or trading activity. Therefore, the plaintiff has to establish a goodwill in his business
or his goods or services with which the trade or public will be led to associate the defendant’s
activities.

In Deepam Silk International vs. Deepam Silks, while granting an order of injunction
restraining the defendant from using the plaintiff’s trademark, the Karnataka High Court
observed that “once the plaintiff has shown that he has been doing business for more than a
decade with the trade name and that he has not only applied for registration of a trademark
nearly a decade back, but also has spent lakhs of rupees on gaining the reputation by
spending towards advertisements in almost all medias available, the loss that would be caused
to the plaintiff, if another person like the defendant makes use of the same trade name and
sells the same goods, cannot be ascertained in terms of money. It is the reputation of the
plaintiff’s trade name that will be in jeopardy. If the defendant is to sell inferior goods, it will
definitely affect the business of the plaintiff and will give an impression to the buyers of the
goods from the defendant that the goods sold by the trade name are not maintaining their
quality. Therefore, there is every likelihood of the plaintiff losing its customers and getting its
trade name defamed.”

Passing-off by the defendant of his goods as the goods of the plaintiff injures the right of
property in the plaintiff, that right of property being his right to the goodwill of the business.
The law assumes or presumes that if the goodwill of a man’s business has been interfered
with by the passing off of goods, damage results therefrom. The plaintiff need not wait to
show that damage has resulted, he can bring his action as soon as he can prove the passing
off; because it is one of the class of cases in which the law presumes that the plaintiff has
suffered damage.

2. Misrepresentation: the Plaintiff must demonstrate a misrepresentation by the defendant to

the public leading or likely to lead the public to believe that the goods or services offered by
him are the goods and services of him.

In its classic form the misrepresentation which gives rise to an action of passing off is an
implied representation by the defendant that his goods are the goods of the plaintiff. As Lord
Dipluck explained in Advocate`s case that:

“Where the plaintiff and defendant were not competing traders in the line of business, a false
suggestion by the defendant that their business were connected with each other would
damage the reputation and thus the goodwill of plaintiff’s business.”

The basis of passing off action being a false representation by the defendant, it must be
proved in each case as a fact that the misrepresentation was made. The use by the defendant
in connection of the goods, of the mark, name, or get-up in question must represent such
goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or
quality; and the defendant’s use of such mark, name or get-up is calculated to deceive.9

3. Damage: the plaintiff must demonstrate that he suffered or in a quia timet action, that he is
likely to suffer damage by reason of the erroneous belief endangered by the defendant’s
misrepresentation that the source of the defendant’s goods or service is the same as the source
of those offered by the plaintiff.10 In a passing off action, damage is presumed even if there
is likelihood of deception.

In ICC Development (International) Ltd. vs. Arvee Enterprises and in Sakalain Meghajee vs.
BM House (India) Ltd, the Delhi High Court cited the case of Erven Warnik Besloten
Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr wherein the House of Lords
identified five characteristics which must be present in order to create a valid cause of action
for “passing-off”. The House of Lords held that “passing-off” is:

1. A misrepresentation; 2. Made by a trader in course of business; 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 trader which can reasonably be
foreseeable; and 5. Which causes actual damage to a business or goodwill of the trader by
whom the action is brought or in a quia time (because he fears or apprehends) action will
probably do so.

In Laxmikant V. Patel vs. Chetanbhai Shah, the Hon’ble Supreme Court held the three
elements of passing-off action are:- a. Reputation of the goods; b. Possibility of deception;
and c. Likelihood of damages to the Plaintiff.

Characteristics of Passing off Action

Following characteristics can be attributed to passing off action:-

a. Proof of fraudulent intent not necessary: it is not essential that the plaintiff must establish
fraud on the part of the defendant in a passing off action. While granting injunction against
the defendants using the trademark “Horlioks”, the Delhi High Court held that “the use of the
offending mark by the defendants to imitate the plaintiff’s trademark appears to be flagrant
and blatant attempt on the part of the defendants to imitate the plaintiff’s trademark with a
view to deceive the unwary purchasers and exploit and encash on their goodwill in order to
pass off their goods as that of the plaintiff’s. the law does not permit anyone to carry on his
business in such a way as would persuade the customers in believing that the goods
belonging to someone else are his or are associated therewith. Where there is possibility of
confusion in business, an injunction would be granted even though the defendant adopted the
name innocently.”15

b. Passing off not limited to goods: Passing off properly so called is not confined to the case
of sale of goods. Passing off also restrains a defendant from trading under a particular name
though the defendant trader is not selling the goods.16 Thus, when a name has become
identified, by adoption and user with a particular trade or manufacture or business, the person
who so used or adopted it can obtain the aid of the Court to restrain the use of it by others in
such a way as to lead customers or the public to think that the trade r business of the person
sousing is his trade or business.

c. Evidence of false representation, but not deception necessary: false representation made
by the defendant, whether expressly or otherwise, must be proved as a matter of fact in each
case. Absence of actual deception is not determinative. The ultimate question of whether the
deception is likely to cause confusion remains a question of fact for the courts to decide in the
light of available evidence.

d. Plaintiff and defendant need not be in the same field: in passing off action, it is
immaterial whether the plaintiff and the defendant trade in the same field or trade in different
products. Remedies in the form injunction was granted in favour of the plaintiff on the basis
of an action of passing off even though the plaintiff and defendant were trading in altogether
different products.17 e. Prior user to be established: for inherently distinctive marks,
ownership is governed by the priority of use of such marks. The first user in the sale of goods
is owner and senior user. In order to succeed, the plaintiff have to establish user of the mark
prior in time than the impugned user by the respondents.

Issue in a Passing off Action

The issue in a passing off action may be stated as follows:

“would the users of the defendants, either the actual user or the proposed user conceded for
the purposes of the action, be likely to lead persons, either members of trade or of the public,
to suppose that the defendant’s goods so sold were the product of the plaintiff’s, or that the
business concerned in its production was the plaintiff’s or was associated with the plaintiff’s
business.”

Factors to be considered in case of an action for passing off:-

The Hon’ble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.19,
held that the following factors to be considered in case of an action for passing off action of
an unregistered trademark for deciding the question of deceptive similarity:-

1. The nature of the marks, i.e, whether the marks are word marks or label marks or
composite marks, i.e, both words or label works. 2. The degree of resemblance between the
marks, phonetically similar and hence similar in idea. 3. The nature of goods in respect of
which they are used as trademarks. 4. The similarity in nature, character and performance of
goods of the rival traders. 5. The class of purchasers who are likely to buy the goods bearing
the marks 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.”

Defences to a passing off action:-

In a suit for passing off, apart from denying the plaintiff’s allegations generally, the defendant
may be able to plead the following in defence in his case:-
1. The defendant may prove that the plaintiff’s business is either fraudulent or forbidden by
law. If any particular business could be shown to be a fraudulent business or one forbidden
by law or one which the public policy of law was to prevent, then in those cases the
proprietor cannot claim protection of the court. For example, if a trader who sells through
street markets counterfeit versions of sound recordings and DVD’s bearing a famous
trademark might not be allowed to rely on his sales to maintain a passing off action against
another counterfeiter who has come into the market after him. 2. A false representation
contained in the mark itself did furnish a defence at law and at equity. Where a trademark is
used exclusively in connection with a trade which was itself fraudulent, the fraud in the trade
which was itself carried on by the trademark is a defence. 3. The mark complained of is not
distinctive of the plaintiff’s business and there is no likelihood of passing off by reason of
defendant’s use of the mark. 4. The plaintiff is guilty of acquiescence, latches, etc. or the
defendant has prior used the mark. 5. The defendants mark represent his own name which he
has the right to use. “A man is entitled to carry on his business in his own name so long as he
does not do anything more than that to cause confusion with the business of another, and so
long he does it honestly”. 6. The field of activities of the parties are completely different. 7.
The defendant claims right of concurrent use of his mark of his mark. Honest and concurrent
user of a trademark when established will constitute a defence. 8. The defendant’s use of the
mark is the bona fide description of the character or quality of goods or services. However,
the defence of the name being ‘surname’ or ‘personal name’, though available to individuals,
is not applicable to a corporate body. 9. Innocent misrepresentation by the defendant also
constitutes a valid defence against passing off action. Under Section 135 (3), where the
defendant satisfies the court that he was unaware of the existence and nature of plaintiff’s
trademark, and that when he became aware he ceased to use the trademark complained of, the
Court shall not grant relief by way of damages or an accounts of profit. 10. The defendant is
using the Plaintiff’s mark by way of a license. Under Section 12 an honest concurrent user
would be protected. Under Section 30 (2)(c)(i), a defence is always open that the proprietor
of a registered trademark has expressly or impliedly consented to the use of the said
trademark by the defendant. This defence, if laid, would need a trial. 11. The defendant may
successfully plead and establish that the alleged misrepresentation was made by his employee
outside the scope of his authority and contrary to express instructions. 12. Lastly, the
defendant may plead that the plaintiff has abandoned his mark and that the defendant has
either already moved for rectification of register for removal of mark or proposed to do so.
Where a mark is abandoned, it may become common to trade. When abandoned, the mark
may be appropriated by another person. The onus is on the defendant to prove
abandonment.31

New Facet of Passing-Off Action:-

The present Trademarks Act, 1999 which provides protection of trademark in its diverse
forms, cases of trade dress does not strictly fall within the statutory definition of “trademark”
under Section 2 (1)(zb), because the business or product that enjoys goodwill independent of
the brand value enjoyed by the trademark cannot always be included within the protective
sweep of the Trademarks Act. This is because of two reasons, firstly, trade dress law is less
explicitly set forth in statute law in India. Secondly, the trade dress protection is broader than
trademark protection. One of them being that the breadth of trade dress protection is
generally perceived to be broader than the conventional protection afforded to trademarks and
business name. The reason for this is that packaging and product design cannot be registered
for trademark protection, and also the trade dress infringement claim requires the Court to
focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark
alone. These elements encompass the manufacturer’s total selling image, unlike trademarks
that merely identify and distinguish the manufacturers from the competitors. However, in
Colgate Palmolive & Co. vs. Anchor Health and Beauty Care Pvt. Ltd., the Delhi High Court
raised the bar of trademark protection available to trade dress of goods and held that
similarity of trade dress was an attribute of passing off, and was actionable per se.

A Case Analysis on Passing-Off Colgate Palmolive & Co. vs. Anchor Health and Beauty
Care Pvt. Ltd. Facts of the case:- the Plaintiffs were selling tooth powder under the
Trademark “Colgate” in cans bearing distinctive get-up and colour scheme. The colour
combination was purportedly applied by the defendants on their cans for a similar range of
products. Colgate alleged that Anchor had adopted similar trade dress in terms of layout, get-
up and colour combination with the obvious intention to encash upon the plaintiff’s goodwill
and reputation. The Plaintiffs averment was that the red and white trade dress had acquired
the meaning as a trademark and they claimed to earn exclusive ownership over the same.
Anchor argued that the essential feature of the label mark was the word mark and not the
colour combination or the overall get-up and since the two trademarks in question; viz.,
Colgate and Anchor were entirely different, Colgate could not seek protection under the grab
of colour combination of the label. Taking the cognizance of the rival containers, the Court
ruled it to be an instance of passing-off based on the overall similarity of trade dress of the
two products. Decision:- As the Court found similarity of look and appearance of the
defendant’s trade dress was that with the plaintiffs trademark, the Plaintiff succeeded. The
Hon’ble High Court held that “trade dress protection is also available under the Trademark
Law and that wide protection against imitation or deceptive similarities of trade dress as like
trademark is the soul for identification of the goods as to its source or design; and as such is
liable to cause confusion in the minds of unwary customers, particularly, those who have
been using the product fo a period”. The Court while granting an injunction in favour of
Colgate expressed that the test in such cases was whether there is likelihood of confusion or
deception in the minds of unwary customers, “irrespective of dissimilarities in the trade
name”.

Infringement of a Trade Mark

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate
legal proceeding to prevent or recover damages for the infringement of a registered
trademark. Infringement occurs when someone else uses a trademark that is same as or
deceptively similar to registered trademark for the identical or similar goods or services as to
cause confusion in the mind of the public. This right of bringing an infringement action
against the defendant has been conferred by Section 28 of the Trademarks Act, 1999. Section
28 of the Act provides that the registration of a trademark gives to the proprietor of a
registered trademark an exclusive right to use the trademark in relation to the goods and
services in respect of which the trademark is registered and to obtain relief in respect of
infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of confusion,

deceptive marks, identical marks and dilution of marks. Likelihood of confusion occurs in
situations where consumers are likely to be confused or mislead about marks being used by
two parties. The plaintiff must show that because of the similar marks, many consumers are
likely to be confused or mislead about the source of the products that bear these marks.
Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way that
would lessen its uniqueness. In most cases, trade mark dilution involves an unauthorized use
of another's trade mark on products that do not compete with, and have little connection with,
those of the trade mark owner. For example, a famous trade mark used by one company to
refer to hair care products, might be diluted if another company began using a similar mark to
refer to breakfast cereals or spark plugs.

What constitutes Infringement? Section 29 of the Trademarks Act, 1999 deals with
infringement. In this context, the ingredients of Section 29 (1) are as follows:-

1. The plaintiff’s mark is registered. 2. The defendant’s mark is identical with, or deceptively
similar to plaintiff’s registered mark; 3. The defendant has taken any essential feature of the
mark or has taken the whole of the mark and then made a few additions and alterations. 4.
The defendant’s use of the mark is in course of the trade in respect of goods/services covered
by the registered trademark. 5. The use of the infringing mark must be printed or usual
representation of the marking advertisements, invoices or bills. Any oral use of the trademark
is not infringement. 6. The use by the defendant is in such manner as to render the use of the
mark likely to be taken as being used as a trademark. 7. The defendant’s use of the mark is
not by way of permitted user and accordingly unauthorised infringing use.

While the above is the general proposition of law as per Section 29 (1), the various
circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9)
of Section 29.

Infringement- various factors:-

In Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd., Madras High Court, after holding the
defendant’s mark “SPASMO-FLEXON” deceptively and phonetically similar to “SPASMO-
PROXYVON”, summarised the law as follows:

1. The registered proprietor of a trademark has exclusive right to the use of the trademark in
relation to the goods and services in respect of which the trademark is registered and to obtain
relief in respect of infringement of the trademark in manner provided by the Act. 2. Whether
it is deceptively or has become publici juris is a question of fact to be established. 3. When a
number of marks, all have a common element, may it be prefix, suffix or root, i.e. essential
part or the core of the mark, they come to be associated in the public mind as an indication of
the same source, which misleads or causes deception or confusion. 4. It is the common
element that has to be identified in an impugned mark and the registered trademark and if
such common element is highly distinctive and is not just a description or a commonly used
word, the likelihood of deception or confusion would be very much there, despite the fact that
it might differ in similarity in certain letters. 5. The nature of the commodity, the class of
purchasers, the mode of purchase and other surrounding circumstances must also be taken
into consideration. 6. Marks must be looked at from the first impression of a person of
average intelligence and imperfect recollection. 7. Marks must be compared as a whole,
microscopic examination being impermissible. 8. The broad and salient feature must be
considered, for which the marks must not be placed side by side to find out the differences in
design. 9. Overall similarity is the touchstone. 10. It is not the colour of the container or the
difference of the product, but it is the statutory right to the word that has to weigh. 11. The
plaintiff need not in general show prima facie case that is required to be shown must be
something more than a case that will avoid the action being struck out as frivolous or
vexatious and even if the chance of success at the trial are only twenty percent, the statutory
protection is absolutely necessary by way of an injunction in order to prevent confusion or
deception arising from similarity of marks.

Following are the instances where the acts constituted infringement of trademark:-

a. Taking substantial feature of the mark:- a mark is infringed by another trader, if, even
using the whole of it upon or in connection with his goods, he uses one or more of the
essential features. b. Additions:- addition of extraneous matter, inconspicuous additions is
infringement. If a person incorporates whole or part of a registered Trademark of another, the
addition of other or matter would not save him from the charge of infringement. c. When a
mark is copied:- if the defendant absolutely copied the mark and made a facsimile
representation of it, no further evidence is required. When the similarities are so close as to
make it impossible to suppose that such marks were devised independently of each other, in
absence of evidence of common origin, the conclusion that one party copied the mark of
another. d. Marks likely to cause confusion: Likelihood of confusion occurs in situations
where consumers are likely to be confused or mislead about marks being used by two parties.
The plaintiff must show that because of the similar marks, many consumers are likely to be
confused or mislead about the source of the products that bear these marks. Where the visual,
aural and conceptual similarities is caused by the defendant’s trademark which causes
confusion in the minds of the public as to its origin, then the mark is held to be an infringing
mark. Furthermore, if the association between the marks causes the public to wrongly
believe that the respective goods comes from the same or economically linked undertakings,
there is a likelihood of confusion. e. Use of reconditioned or second articles:- the use of
plaintiff’s mark on reconditioned goods may constitute infringement even if it is clarified that
goods are not original but reconditioned. f. Printing of labels:- unauthorised printing of labels
of the plaintiff will constitute infringement. Moreover, if a copyright subsists in labels, it will
constitute infringement of copyright as well. g. Goods manufactured by third party would
constitute infringement:- when the owner of a mark gets the goods manufactured by a third
party under a contract, solely for the mark, sale of the goods bearing the mark by such a
manufacturer to other person would constitute infringement. h. Marks used along with other’s
mark:- use of the plaintiff’s mark along with the defendant’s name even if prominently
displayed constitutes infringement. i. Similar marks in medicinal products: when the goods or
products involved are medicinal products, confusion of sources or drugs or medicinal
preparation caused by similar marks of the defendant would constitute infringement, although
similarity in the marks would have been very less. j. Marks with international reputation used
unauthorisedly: in case of marks which have acquired international reputation, an action for
its protection against un-authorised use will lie even if the owner of the trademark does not
have any business activity in India.

Who can sue for infringement?

The plaintiff in an infringement suit may be either:

1. The proprietor of the registered trademark or his legal successor.

2. A registered user of a trademark subject to a prior notice to the registered proprietor and
consequent failure of the registered proprietor to take any action against the infringer.

3. An applicant for registration of a trademark. He can file an infringement suit to protect his
right to continue with the suit which will sustain only if his trademark is registered before
hearing the suit.

4. Legal heirs of the deceased proprietor of a trademark. 5. Any one of the joint proprietors
of a trademark. 6. A foreign proprietor of a trademark registered in India when Infringement
occurs in India.

Who can be sued?

1. The infringer who directly by his action causes infringement or who uses or contemplates
or threatens to use a trademark infringing plaintiff’s right.

2. The master responsible for his servant’s act of infringement. For example, a worker who is
engaged in the business of making false labels is a servant of the master who orders the
making of such labels. It is the master in such a case who is to be sued.

3. The agents of an infringer.

4. Directors and promoters of a limited company cannot be joined as co-defendants unless

they have personally committed or directed infringing acts.

Jurisdiction:

Suit for infringement or for passing off is to be filed in the court not inferior to a District
Court having jurisdiction to try the suit. District Court having jurisdiction includes a District
Court within the local limits of whose jurisdiction, at the time of the institution of the suit or
other proceedings, the person instituting the suit or other proceedings, or where there are
more than one person, any of them who:-

a. Actually and voluntarily resides; or

b. Carries on business; or c. works for gain; can bring in an action against the defendant.

Period of Limitation:

Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the infringement is a
continuing one, a new course of action arises every time an infringement occurs. For
example, a continued sale of infringing article would give rise to a fresh cause of action.

Issues in Infringement suits:

The issues that arise in an infringement action are the following:-

a. Whether the plaintiff is entitled to file a suit; i.e. whether he is proprietor of a registered
trademark or a registered.

b. Whether the use or proposed use of the mark by the defendant is an infringement of the
registered trademark.

c. Whether the defendant has succeeded in establishing one or more of the defences set up by
him.

d. If the plaintiff’s succeeds in the suit, what reliefs he is entitled to?

e. Whether the plaintiff is entitled to any interlocutory relief?

f. Whether there has been actual instances of deception and confusion amongst the public?

Evidence in Infringement Actions:

The fact of registration of the plaintiff’s mark is to be proved by production of a copy of the
entry on the register certified by Registrar and sealed with the Trademark Registry. The
certified copy will contain all the entries in the register relating to the mark including the
conditions, if any, subject to which a mark is registered. In all legal proceedings relating to a
registered trademark, the original registration of a trademark and all subsequent assignments
and transmissions will be prima facie evidence of the validity. The plaintiff must establish
that the use of the mark complained of comes within the scope of definition of infringement.
Where the defendant has absolutely copied the mark and made a facsimile representation of
it, no further evidence is required. Where the mark used by the defendant is not identical with
the registered trademark, the court has to determine the two marks are deceptively similar.
Opinion evidence is not admissible, but statement of witnesses to the effect that they
themselves would be deceived are admissible. Evidence as what constitutes the essential
feature of the mark is admissible.

Acts Not Constituting Infringement (Section 30):-

Following acts do not constitute infringement of the right to the use of a registered trademark:
i Where the plaintiff has no title to sue;

ii. Where the registration of the trademark is not valid and liable to be expunged;

iii. When the use of the mark by the defendant is not an infringement under Section 29;

iv. When a person uses a trademark in accordance with honest practices in industrial and
commercial matters that do not take unfair advantage.

v. When a person uses a trade mark in relation to goods or services indicating character,
quality or geographical origin

vi. When a person uses a trade mark in relation to services to which the proprietor has already
applied the mark or registered user the object of the use is to indicate that the proprietor or the
registered user has performed the services.

vii. When a person uses a trademark, which is subject to any conditions or limitations,
beyond the scope of such conditions or limitations will not constitute infringement.

viii. When a person uses a mark in relation to goods to which the mark has been lawfully
applied, or where the registered proprietor has consented to the use of the mark. This applies
to cases where goods are purchased in bulk and sold in retail applying the mark.

ix. When a person uses a mark in relation to parts of a product or accessories to the goods in
respect of which the mark is registered if the use is reasonably necessary to indicate that the
goods so adapted.

x. When a person uses a mark or a similar mark in the exercise of a right conferred by
independent registration.

xi. When a person assigns a trademark to another, this will not affect the right of that person
to sell or deal in the goods bearing that mark.

Case Analysis on Infringement:

1. Castrol Limited Vs P.K. Sharma

Facts of the case: Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And
Castrol Gtx 2 in respect of oils for heating, lighting and lubricating. During the month of
December 1994, plaintiffs came to know that the defendant was carrying on business of
selling multigrade engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb'
IN IDENTICAL containers as used by the plaintiffs. Plaintiff filed a suit for perpetual
injunction.

Held: Hon’ble Delhi High Court while passing an ex parte decree held that the user of the
said trade marks by the defendants, who have no right whatsoever to use the same is clearly
dishonest and is an attempt of infringement. The prayer of the plaintiff is accepted and they
are restrained by a decree of injunction from selling, advertising directly or indirectly in
multigrade engine oil with the aforesaid trade marks in containers which are similar to the
containers being used by the plaintiffs.

2. Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.

Facts of the Case:-the plaintiff company manufactured drugs under the trade name
"Calmpose". The defendant company subsequently floated its similar product under the
trademark "Calmprose".

Held: The Hon’ble Delhi High Court held that the two trademarks having appeared
phonetically and visually similar and the dimension of the two strips being practically the
same including the type of packing, the colour scheme and manner of writing, it is a clear
case of infringement of trade mark and the ad interim injunction granted in favour of the
plaintiff.

What the Plaint should contain?

There is no special form of pleading prescribed for an action for infringement. The pleadings
must contain a clear and conscience statement of all material facts relied upon by the
plaintiff, but not evidence. It should specifically allege what the defendant has infringed or
threatened to infringe in case of registered mark. In case of passing-off, the plaintiff must
specifically allege the wrong that has been done to his goodwill or business and also the act
of misrepresentation committed by the defendant. Particulars of the acts committed by the
defendant which form the basis of allegation must be given. Where the fraud is desired to be
raised, it must be clearly pleaded, and particulars of fraud must be stated. Where both the
infringement and passing off are combined in the suit, the plaintiff should state that by virtue
of such user the mark has become distinctive of his goods.

Reliefs in suit for Passing-Off and Infringement:

Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for
passing off and for infringement includes the following:-

a. Accounts of Profit: Account of profits are the actual profits which the defendant has made
by infringing the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant
of relief which includes, at the option of the plaintiff, either damages or an account of profit.
In taking account of profits, the damage the plaintiff have suffered is totally immaterial. The
object of account of profit is to give to the plaintiff the actual profits the defendant has made
and of which it is established that the profits were improperly made.45 Section 135 (3)
expressly enacts that where the court is satisfied that it is a case of innocent infringement, it
shall grant only nominal damages. Further, in such situation, the Court shall not grant an
account of profits.

b. Damages: Damages are the compensation awarded to the Plaintiff by the defendant for the
legal injury caused by him to the plaintiff. Damages are the notional compensation paid to the
plaintiff irrespective of the actual amount of loss suffered by the plaintiff.
 Following are the matters which are generally taken into account in awarding damages
include the following:

I. Any loss of trade actually suffered by the plaintiff directly from the acts complained
of, or properly attributable to injury to the plaintiff’s reputation, business, goodwill
and trade and business connection caused by the acts complained of.
II. II. Damages may be awarded even though there is no deception.
III. III. Where the defendant’s goods are similar in quality to the plaintiff’s goods, the
defendant’s wrongful act may cause injury to the plaintiff’s business reputation.

In Yahoo Inc. vs. Sanjay V. Shah, the Delhi High Court held that the defendants passed off
their goods as if the goods were manufactured by the plaintiff using the deceptively similar
“Yahoo”. The Hon’ble High Court not only granted permanent injunction restraining the
defendants from the use of the trademark “Yahoo”, but also decreed for damages amounting
Rs. 5,05,000/- in favour of the plaintiff. c. Injunction: Injunction is one of the reliefs which an
aggrieved person may obtain in any suit for infringement of a registered trademark or for
passing off of the registered trademark or unregistered trademark. The remedy of injunction
is an effective remedy in preventing the infringement of registered trademark or unregistered
trademark. Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While
granting an injunction, the Court should always rely on the fact that whether the balance of
convenience lies with the plaintiff and whether an irreparable damage or injury would occur
to the plaintiff if injunction is not provided for against the defendant. Section 135 (2) further
provides for ex parte injunction or any interlocutory order for any of the following matters,
namely:- a. For discovery of documents; b. Preserving of infringing goods, documents or
other evidence which are related to the subject-matter of the suit; c. Restraining the defendant
of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to
recover damages, costs or other pecuniary remedies which may be finally awarded to the
plaintiff. In Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar, the Delhi High
Court held as follows:- “Whenever a court considers it necessary in a particular case to pass
an order of injunction without notice to the other party, it must accord the reason for doing
so, and also how the object of granting injunction itself would be defeated if ex parte order is
not passed, due to delay. An order passed without such reasons is liable to be vacated.”
Injunction may be of following types:-

I. Anton Piller Order: these are ex parte orders to inspect defendant’s premises. A Court may
grant such an order to the plaintiff where there is a possibility of the defendant destroying or
disposing of the incriminating material.

II. Mareva Injunction: in such an order, the Court has the power to freeze defendant’s assets
where there exists a probability of the assets being dissipated or cancelled so as to make
judgement against him worthless or un-enforceable.

III. Interlocutory Injunction: is the most commonly sought and most often granted form of
injunction. It serves to take action against the defendant on the basis of past infringement.
The interlocutory injunction is an order restraining the defendant from continuance of the acts
which amount to infringement. It serves the purpose of of preventing further infringement.
IV. Perpetual Injunction: it is an order restraining the defendant totally, for all times to come,
from doing any act which infringes the right of the proprietor of the trademark. Perpetual
injunction is generally granted when the suit is finally decided.

Difference between Passing-Off and Infringement

In the case Durga Dutt Sharma V. N.P. Laboratories48, Hon’ble Supreme Court laid the
difference between the two – infringement and passing off. It was held that "An action for
passing off is a Common law remedy, being in substance an action for deceit, that is, a
passing off by a person of his own goods as those of another. But that is not the gist of an
action of infringement. The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication of the exclusive right to
use the trade mark."

a. Conceptual Difference:-

1. Passing off action is based on common law principle that nobody has any right to represent
his goods as somebody else. Such action is recognised both in respect of unregistered as well
as registered trademark. An action for infringement on the other hand is based on the right
acquired by registration and is possible only in respect of registered trademarks.

2. An action for infringement is a statutory right. It is dependent upon the validity of the
registration and subject to other restriction laid down in the Act. On the other hand, in a
passing off action registration of trademark is not relevant. It is based on property in goodwill
acquired by use of the mark.

3. The proprietor of an unregistered trademark whose mark is unauthorisedly used by another

cannot sue for infringement of a trademark. His only remedy lies in bringing a passing off
action.

4. In an infringement action, the plaintiff is not required to prove the reputation of his mark,
which is not the case in case of passing off. In passing off action, the plaintiff has to prove
that his mark has acquired reputation in relation to any goods delt with by him.

5. An infringement action can result in the restraining of defendant from using the registered
trademark whereas in a passing off action the defendant is restrained from selling the article
without clearly distinguishing from the goods of the plaintiff.

6. In an action for infringement, the use of trademark of the plaintiff, in relation to goods is a
sine qua non for the action. In contradiction, in a passing off action, it is deceit as practiced
on the public and not the use of the trademark that is to be shown.

b. Procedural Difference:-
1. In an infringement action, if there was colourable imitation, the fact that the get up was
different was not relevant in an infringement action though it might have had relevance in a
passing off action.

2. In passing off action identity or similarity of marks is not sufficient, there must also be
likelihood of confusion. But in case of infringement if the marks are identical or similar no
further proof is required.

3. An infringement action is based on the violation of the proprietary right and deception can
be one of the ways whereas in a passing off action deception or likelihood of deception is the
only thing to be established.

4. An infringement action does not require the use of the mark. The proprietor could have
never used the mark in the course of the business and still bring an action for infringement
whereas in a passing off action the plaintiff must establish that the mark by usage has become
distinctive of his goods i.e. the goods are identified by the mark.

5. In an action for infringement, the plaintiff must make out that the use of the defendant’s
mark is so close either visually, phonetically or otherwise and the court reaches the
conclusion that there is an imitation, no further evidence is required to establish that the
plaintiff’s rights are violated. Whereas, in case of passing off the defendant may escape
liability if he can show that the added matter is sufficient to distinguish his goods from the
goods of the plaintiff.

6. In case of a passing off action, the defendant's goods need not be same as that of the
plaintiff, they may be allied or even different. In case of an action for infringement, the
defendant's use of the offending mark may be in respect of the goods for which the mark is
registered or similar goods.

Combined action for infringement and passing off

Where a mark is registered, the plaintiff may combine his action for infringement along with
an action for passing off, where the plaintiff has used his mark and can establish goodwill and
reputation in connection with his business. This provides for a better protection of trademark.

Conclusion:-

Thus, from the above discussion it can be said that protection of trademark is important not
only from the business point of view but also for the protection of consumer from fraud and
imposition. However, it is beneficial if combined action for infringement and passing off is
brought in one suit as incorporating a plea of infringement, if the mark gets registered can
always amend the plaint. But in an action for infringement alone the plaintiff may not be
allowed to include a fresh cause of passing off in order to save the action. Since the scope of
passing off action is wider than an infringement action, if an action fails, there is a chance of
other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides
for a better protection of trademarks, the fact that the trademark law provides protection to
trademarks has come out to be a reality. The present Act expressly recognises the common
law remedy and thus saves both the registered and unregistered trademarks from being
misused.

References:-

1. Kailasam and Vendaraman’s : the Law of Trademarks and Geographical Indications

2. P. Narayanan : Law of Trademarks and Passing off

3. D.P. Mittal : Trade Marks Passing off and Geographical Indications of Goods : Laws
relating to Copyrights, Patents, Trade Marks and GATT

4. Dr. B.L.Wadehra : Law Relating to Intellectual Property

5. V K Ahuja : Law Relating to Intellectual Property Rights : Intellectual Property Rights in

India

6. Meena Paul : Intellectual Property Laws

7. www.manupatra.com

8. www.indiankanoon.org

9. www.vakilno1.com 10. www.delhihighcourt.nic.in