Comparing passing off and trademark infringement

By Abhai Pandey, Lex Orbis IP Practice
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Trademark infringement and passing off deal with similar grievances, but are conceptually different. The difference between trademark infringement and passing off lies in the fact that the former is a statutory offence, while the latter is a common law offence. Another aspect that distinguishes the two lies in the cause of action and right to relief.

Abhai Pandey Lawyer Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

Common law remedies

The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories affirmed that an action for passing off is a common law remedy being in substance an action for deceit – the passing off by a person of his own goods as those of another.

This is not the gist of action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark in relation to those goods.

Trademark usage

The use by the defendant of the trademark of the plaintiff is not essential in an action for passing off. However, it is the sine qua non in an action for infringement. No doubt where the evidence in respect of passing off consists merely of the colourable use of a registered trademark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trademark in a passing off action would also be an action for infringement of the trademark.

Infringement and deception

However, in an action for infringement the plaintiff must, without doubt, make out that the use of the defendant’s mark is likely to deceive. Where the similarity between the plaintiff’s mark and the defendant’s mark is so close, either visually, phonetically or otherwise, and the court concludes that there is an imitation, no further evidence is required to establish that the plaintiff’s rights have been violated.

Implications of copying

Conversely, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the appearance, packing and other writing or marks on the goods or on the packaging in which goods are offered for sale show marked differences from that of the registered mark would be immaterial.

In a case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. The Supreme Court reiterated this position while dealing with this issue in the case of Rustom and Hornby Ltd v Zamindara Engineering Co.

Key distinctions

The distinction between an infringement action and a passing off action is important, apart from the question as to the nature of trademark. In the case that involved the issue of passing off, the court examined if the defendant had intended to lead purchasers to believe that they were buying the plaintiff’s goods, by selling goods with the particular marking.

The issue in the infringement action was whether the defendant was using a mark which was the same as or which is a colourable imitation of the plaintiff’s registered mark.

It very often happens that although the defendant is not using the trademark of the plaintiff, the get-up of the defendant’s goods may be similar to the plaintiff’s goods, so much so that a clear case of passing off may be proved.

Conversely, it is conceivable that although the defendant may be using the plaintiff’s mark, the get-up of the goods and the prices may be so different that there would be no possibility of deception of the public.

Nevertheless in an action on trademark infringement, an injunction would be issued as soon as it is proved that the defendant is improperly using the plaintiff’s mark.

The Gujarat High Court has yet again reiterated this stand in Vikram Stores & Anr v S.N Perfumery Works & Anr, where it was held that that the difference between passing off and infringement lies in the cause of action and right to relief in the two suits.

Proof required

The court went on to clarify that in case of an infringement, it has to be proved that the essential features of the mark have been so copied as to deceive the consumer and the presence of deviations from the mark would be irrelevant. The court clarified that in the case of passing off, it must be established to be a colourable imitation of the mark and that the action must be successful if the presence of such features is shown.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based law firm specializing in intellectual property issues.

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