A trademark is a distinctive identity of an organization in the form of a symbol, logo, design, phrase, name, word etc., or a combination of elements that identifies a product or service. This acts as a bridge for the customers to recognize the company and their products and services. A trademark is a legally registered property of the firm/organization and differentiates a particular firm goods from that of others.
Section 29(1) of the Trademark Act, 1999 ("Act") states “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.”
Concerning ‘passing-off', the Act does not specifically describe the term. However, there are numerous case laws and precedents that provide a framework for the Courts to help them differentiate between infringement and passing off.
The case of Perry v. Truefitt, 1842 laid down the fundamental principle of ‘passing-off as “A man is not to sell his goods under the pretense that they are the goods of another man”
The Delhi High Court in the case of Cadbury India Ltd. & Ors. v. Neeraj Food Products, explained the distinction between passing off and infringement of trademark as follows:
A trademark infringement attracts a statutory remedy while the remedy for passing off is more of a tort.
In the event of an infringement, the defendant should be using the trademark of the plaintiff, whereas in the case of passing off no such pre-requisite is required.
In an action for infringement, the Plaintiff is the registered proprietor of the trademark in question and has an exclusive right to use the mark. In the case of passing off, the act is more of an act of deceit
The liability of the defendant in case of trademark infringement is absolute irrespective of the fact whether the outfit, outer covering etc. originate from a different source. In case of passing off, the defendant can escape his liability if he can prove to show that the material included by him is enough to distinguish his goods from the plaintiff’s goods.
Apart from the abovementioned, a trademark protects registered goods and services whereas passing off protects unregistered goods and services as goodwill is essential. Passing off remedy can be sought under Section 20 of Civil Procedure Code, 1908 and infringement suits under Section 134 of the Act.
In the landmark case of S. Syed Mohideen v. P. Sulochana Bai, 2016 (66) PTC 1, the respondent was successful in proving that despite both parties being the registered owner of the mark, ‘Irrutukadai Halwa’ it is not just about the use of the trademark. It was pleaded before the Supreme Court that the trademark had become a household name as the family had been selling halwa since the 1990s thereby attracting a different reputation. The Hon’ble Court agreed that it has become the goodwill of the respondent and no one could use the trademark in question. Furthermore, it was observed that the remedy of passing off was much broader than trademark.
A registered trademark is the property of the company and is a direct reflection of the company’s products, services, reputation and goodwill which forbids others from using the same or deceptively similar trademark.
In a recent case before the Hon'ble Kolkata High Court, of Ganesh Grains Limited and Anr vs Ganesh Department Stores and Ors on 13 August 2021, headed by Justice Moushumi Bhattacharya, passed an order in favour of the petitioners stating that they had established a prima face case for infringement and passing off of the petitioners’ registered trademark “GANESH”.
The respondents were based in Coimbatore and carrying out a partnership firm using the name “GANESH DEPARTMENT”. The main contention was against the use of the word “GANESH” and not the partnership firm. The use of the word was in connection to identical goods as used as the plaintiff, namely Atta, Maida etc.
The Petitioner had been using the word “GANESH” since 1956 when an application had been filed for the registration of the trademark of the word and had got it registered in 2003. They have been using the trademark for their goods nationally as well as internationally making voluminous sales per annum. Apart from using the registered trademark the petitioner also used a distinctive combination of packaging as well for an equally substantial time. The Respondent on the other hand has a different getup and packing but the word “GANESH” has been used predominantly in a prominent fashion consistently. Furthermore, it was only in 2005 that the Respondent put forward their application for trademark registration but the same was deemed abandoned as they failed to file a counterstatement.
The Court held that because of the prolonging usage of the trademark for the specific goods, the petitioners have the exclusive proprietary right over the mark. The respondent had not put forward any basis to claim concurrent use of the mark “GANESH” as well. As the goods dealt with by the respondents are identical to those dealt with by the petitioner no.1 is covered under Section 28 and 29 of the Act, which provides certain rights conferred by registration and infringement of trademarks respectively.
REFERENCES
“Ganesh Grains Limited and Anr vs Ganesh Department Stores and Ors on 13 August, 2021” (Indiankanoon.org2021) <https://indiankanoon.org/doc/177791810/>
Malik P, “Difference between Passing off and Infringement of the Trade Mark” (Mondaq.comMarch 10, 2020) <https://www.mondaq.com/india/trademark/902156/difference-between-passing-off-and-infringement-of-the-trade-mark>
legal Service India, “Trademark Infringement and Passing Off” (Legalserviceindia.com2017) <https://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.html>
“What Is the Difference between Passing off and Infringement of Trademark? - Law Circa” (Law CircaJuly 28, 2020) <https://lawcirca.com/what-is-the-difference-between-passing-off-and-infringement-of-trademark/#Meaning_of_trademark_and_trademark_Infringement>