The world is developing at a great pace. New ideas, technologies, and businesses are emerging. Human brains, across the globe, are working 24*7 on new ideas. Though divided by boundaries, the world is being united by businesses. In such a global scenario where every day consequent to ideas new projects and businesses are born, safeguarding these beautiful ideas and work has become a necessity. This shield to the ideas is being provided by common laws and statutory laws. Considering the global scenario, to stand out from the similar and to be recognized by lots has become essential. To be able to be recognized and establish a different identity, TRADEMARK plays a pivotal role. Trademarks, as defined by WIPO, means “a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”. Trademarks are used by businesses for a distinctive identity, reputation, promotion, and whatnot. A trademark not only holds distinctive value but also holds reputation and monetary value. Thus, it is considered IP (intellectual property). These trademarks, in India, are protected by TRADEMARK ACT, common law and judicial pronouncements.
Passing off is a concept of common law, though not defined by The Trade Marks Act, 1999, is recognized in the Trade Marks Act, 1999. Passing off, in its simplest term means, “no man may pass off his goods as those of another” Well-known trademarks, in common parlance and in the simplest way, can be understood from the term “well known” itself. It basically means a trademark that has good recognition among lots. These businesses, projects, and ideas must be distinct and must have different recognition. This different recognition is shielded by common and statutory laws.
Trademarks hold various types of values. As of today, businesses are spending huge on the promotions of their ideas and business. This is done to expand the reach of the business and to take the business to new heights. When a business spends so much time and money in expanding the business and idea and makes a good reputation among the consumers, then, these businesses along with the consumers and praise, also attract attackers on the repute. These attackers try to take advantage of the repute of the business and try to build a fortune for themselves in the name of the original business by PASSING OFF or INFRINGEMENT of trademarks of the reputed businesses. They use unethical and illegal means to defraud and deceive innocent consumers. Indian legislation as well as common law protects the business owners in their trademarks.
Trademark as per the Trade Marks Act, 1999 means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour”
Well known trade mark as per the Trade Marks Act, 1999 means “in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
Section 11(3) of the Trade Marks Act, 1999 upholds the validity of the common law principle of Passing off and shields unregistered trademarks. As per Section 27 of the Trade Marks Act, 1999, there will be no right to institute a suit for infringement for the unregistered trademark. But, this will not affect the common law or tort of Passing off. What can be understood from this section is that registration or non-registration of a trademark, under no circumstances, affect the law of Passing off. Registration is not a condition that is required for protection under the Passing off law. As per Section 135 of the trademark act, the court is versed with the powers that it can use in case of infringement or in case of Passing off the trademark, and the District Courts under Section 134 of the Trade Marks Act, 1999 have jurisdiction to try the suit.
In a very celebrated case by the legal minds of the UK, and followed by the legal fraternity in India, Reckitt & Colman Ltd v Borden Inc, it was put forward that there must be “(1) goodwill owned by the claimant (2) misrepresentation by the defendant; and (3) the likelihood of damage to that goodwill” in order to establish the action of passing off.
In the Whirlpool case it was stated by the court that “As regards the submission of learned counsel for the appellants that the respondents had abandoned the trademark ‘WHIRLPOOL’ and therefore, they cannot maintain the action of passing off, is not well founded. As already seen, the respondents had been using the trademark ‘WHIRLPOOL’ worldwide arid there is no reason to assume that the same was abandoned. Mere fact that the registration was not renewed by them in India after 1977, is no ground to hold that the respondents had abandoned the trade mark.”
Neon Laboratories Ltd. v Medical Technologies Ltd. and Ors., a pronouncement of the apex court in India, is also a very celebrated case law by legal minds in India, according to this case, what was made essential for the protection of the trademarks was “prior use” and not the registration.
Recently, controversy regarding the PULSE candy-“ Kachcha Aam with Tangy Twist” came to the limelight. As per the controversy, the trademark of the Pulse candy was infringed by a competitor in the market by using the Plus++ mark which was deceptively similar to the Trademark of the plaintiff in the case and amounted to infringement, passing off, dilution, unauthorized representation or unfair competition. The court after considering the facts of the case and going through and discussing various case laws decided-
“In view of the above, I find the defendants to be guilty of infringement of the plaintiff’s registered marks as also passing off. Adoption of the similar trade mark and trade name by the defendants is not only a violation of the rights of the plaintiff, but may also deceive general unwary consumers and appears dishonest.”
What can be understood from the discussion is that in the present times the trademark has become essential for the protection as well as promotion of businesses. The world has become a global market where everybody is free to sell their ideas. In such a scenario the use of trademarks and their protection is pivotal. The statutory provisions that are provided by countries are in addition to the common law of “Passing off”. Registration adds well to the already provided protection by the common law. Registration is not a sine qua non for seeking protection in good faith. As per the legislation and judicial pronouncements, use holds supremacy. In the end we can say that “a man is not to sell his own goods under the pretence that they are the goods of another man”
Auithor(s) Name: Aseem Bhakher (Department of Laws, Panjab University, Chandigarh)