I.

THE COURT IN PANDORA HAS NO JURISDICTION TO TRY AND

ENTERTAIN A SUIT FOR PASSING OFF OF AN UNREGISTERED MARK,
WHICH IS APPARENTLY DONE BY AN ENTITY IN CANADA?

The Trade Mark Act,1999 of Pandora is a comprehensive legislation dealing with the rights and
limitations of a registered trade mark owner as well as an un registered trade mark owner.
Section 1(2) and 2(v) 1 of the said Act states that the law applies to whole of the country and that
the law should be exercised within the territorial limis. It does not expressly provide for the
application of extra territorial jurisdiction.
Even if under certain special circumstances the extra territorial application of the legislation has
to accept it cannot be applied in the instant matter because there is no infringement of copyright.
Section 30 of the Act lists down limits on the effect of registered trademark and also enumerates
certain acts which do not amount for infringement. One such condition is as follows

(a) Where a person uses the mark in relation to goods and services for which the registered user
had applied for the trademark and may not have removed it or consented to its use-2

The said provision deals with use of a Trademark with the consent of the registered owner of the
same. In the matter at hand the original defendants had used the trade mark when they were
directed by the third original defendant who is the managing director of “wonder holidays CA”
who has an oral agreement with the plaintiff for the using of the trademark which the plaintiff
admits both in the plaint as well as the suit for injunctions.3

Further in Kaviraj Pandit Durga Dutt case4 the Hon’ble Supreme Court held that in an action for
infringement the onus would be on the plaintiff to establish that the defendant in the course of
trade in the goods, in respect of which his mark is registered, is deceptively similar.
In the matter at hand the website cannot be said to be deceptively similar to the original trade
mark registered in Pandora.
In Cadilla health care v. Cadilla pharmaceuticals ltd5 it was held that the Trade Marks Act is not
having extra territorial application as it guarantees rights and privileges only inside the territory
of India. The application of extra territorial application itself is gone. However if in special
circumstances it is provided the necessary eligibility criteria for the application of the said at is
not met with.

With regard to the application of extra territorial jurisdiction regarding a website outside the
forum state the real test to be applied is the” Effects test” which is derived from the case of
Calder v. Jones6. The test does not focus on the degree of interactivity between the resident and

1
Trade Marks ACT, 1999
2
Ibid
3
Moot propostition para.4
4
1965 AIR 980
5
[2001 PTC (SC) 561]
6
952 F. supp.1119(W.D.P.a 1996)
the forum defendant; rather it focuses on the effects intentionally caused within the forum by a
defendants conduct online outside the forum. It is observed that the effects test marks the wave
of future cyber space.
Applying the test in the instant matter the websites’ acts and subsequent effects intentionally
created is not sufficient for the court to assume extra territorial jurisdiction. The website acted
bonafide out of the directions of the third defendant.

 ,
 II. THE PLAINTIFF CANNOT FILE A COMPOSITE SUIT FOR (I)
INFRINGEMENT OF REGISTERED TRADEMARK AND (II) PASSING OFF OF
UNREGISTERED TRAADEMARK

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.”7 Similar view has been held in ICC Development (International) Ltd. vs. Arvee
Enterprises8 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.
In the matter at hand the petitioner is filing a suit for passing off of an unregistered trade mark.
However the matter of passing off is entirely different from that of Registered Trade Mark. The
only remedy available for passing off is a right to claim damages and no legal action regarding
the exclusive use or enjoyment of the common law mark can be claimed by the true possessor of
such trademark.
Section 17  of the Trade Marks Act, 1999 which reads:-
"(1) When a trade mark consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a whole. 9 Such a right is not
guaranteed to an owner of common law mark i.e., unregistered trademark.

Trade mark with relation to goods and services recognizes the source and originality of
the goods and conveys to the general public the quality of the product. In the case of
Cadbury India Limited v. Neeraj Food Products10, the Delhi High Court observed that the
spirit, intendment and purpose of the trademark legislation is to protect the trader and
consumer against dishonest adoption of one‟s trademark by another with the intention of
capitalizing on the attached reputation and goodwill. Again, in another landmark
judgment, the Supreme Court in the case of Ramdev Food Products Pvt. Ltd v.
ArvindbhaiRambhai Patel11held that, the purpose of trademark was to establish a
connection between the goods and the source thereof which would suggest the quality of
goods. The primary object of the Trademarks Act was decided by Bombay High Court, in
the case of Cluett Peabody & Co Inc v. Arrow Apparels 12 which was observed to be
protective of the proprietary right of a registered Trademark holder.

7
1 N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 2
8
2003 (26) PTC 245 (Del.
9
Trade Marks Act,1999
10
Cadbury India Limited v. Neeraj Food Products, (2007) 25 PTC 95 (Del), p. 126.
11
(2006) 33 PTC 281 (SC), p. 300.
12
(1998) 18 PTC 156 (Bom)
 In the case Durga Dutt Sharma V. N.P. Laboratories 13, 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.49 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 unauthorised 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.

It can be understood from decision that passing off and Infringemnt of registered trademark are
mutually exhaustive remedies claimed. It in the view of the court, cannot be filed as a composite
suit. 14
13
AIR 1965 SC 980 49
14
Vikram Stores v. S.N. Perfumery Works, 2008 AIHC 494 (Guj)
Hence it is submitted that the Suit is liable to be dismissed as 'barred by law' under Order VII
Rule 11 (d) of the Code.