Passing off

The term is not specifically defined in the Trade marks act 1999, however the law on passing off
has been developed by the courts over the decades. The primary principle behind passing off
being unlawful is because one is not allowed to sell his goods under pretense that they belong to
the other man1.House of Lords in the case of Reckitt & Colman Ltd v. Borden Inc.2, explained
that to prove an act of passing off the plaintiff needs to show that there was goodwill or
reputration, misrepresentation of plaintiff’s trade mark to deceive pubic, occurrence of injury.
The same “trinity test” was reiterated by the apex court in S. Syed Mohideen vs. P. Sulochana
Bai3

As stated by U.K. Supreme Court in Starbucks v. British Sky Broadcasting4, to establish

goodwill the plaintiff has to show presence of goodwill in the form of consumers, it is not
mandatory to maintain an office within the jurisdiction, but the presence of consumers would
suffice. In this pretext it is to be noted that “kyon kia” is a brand well known to people, and has
established goodwill and reputation among the consumers, it is worth to bring into the attention
of the hon’ble court the survey conducted in the year 2018 which found that a every third Indian
citizen was found to be using one of KIPL’s devices, KIPL occupied 65% of mobile phone
market in the 2020 which and KIPL does business in length and breath of country. These facts
are sufficient to establish that the Applicant’s company had established immense reputation and
goodwill over the time.

The second test is whether the marks of plaintiff and defendants’ likelihood of confusion it is not
essential to prove actual confusion, the test is whether theirs is a likely hood of confusion 5, in
Adidas-Salomon AG v Fitnessworld Trading Ltd6 it was held that deceptive similarity between
the two marks is sufficient to establish the likelihood of the confusion. As proven before the two
marks being deceptively similar hence are likely to cause confusion among the consumers.

1
Perry v Truefitt (1842)
2
Reckitt & Colman Ltd v. Borden Inc., [1990] 1 All E.R. 873
3
S. Syed Mohideen vs. P. Sulochana Bai, (2016) 2 SCC 683
4
Starbucks v. British Sky Broadcasting, [2015] UKSC 31
5
Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd. and Ors., 2018 (73) PTC 1
6
Adidas-Salomon AG v Fitnessworld Trading Ltd., [2003] ECR I-12537
The third element being “damage”, Madras HC Court in Latha C. Mohan vs Cavinkar Pvt. Ltd.
And Ors. 7
the court stated that the objective of the trademark is to ascertain the origin of the
manufacture of products. In the market, the main value of the brand is its promotional effect.
passing off is to all intents and purposes is an act that arises out of confusion. There is a
substantial and evident risk of damage because the field of activity is common. The
misappropriation of business reputation is a violation. Hence likelihood of injury is established.
Also relying upon the judgement of Reddaway v. Benham8 DHC in Ellora Industries vs Banarsi
Das Goela and Ors.9 The court explained “In a passing off lawsuit, it only needs to be shown
that the defendant's property is labeled, manufactured, or described in such a way as to mislead
the ordinary buyer and cause him to confuse the defendant's property with the plaintiff’s. being
misled or confused, forms the the heart of the plot; and the plaintiff does not have to prove fraud,
or that someone was actually misled or was actually hurt, the court went on to state that “if There
is a misrepresentation for business purpose as to the origin of goods which the defendants
manufacture in the course of their business. This is passing off. It is sufficiently established that
the two marks were deceptively similar enough to cause confusion in minds of consumers, and
there is likelihood of injury caused to the applicant.

Hence all three components of trinity test are fulfilled, thereby proving that the defendant’s use
of trademark belonging to applicant/plaintiff amounted to the tort of passing off and hence a
permanent injunction shall be imposed thereby prohibiting the defendants from manufacturing
and selling any products with deceptively similar trademark, and protecting the plaintiff from
any possible future injury.

7
Latha C. Mohan vs Cavinkar Pvt. Ltd. And Ors., (1978) FSR 357
8
Reddaway v. Benham, (1892) 2 Q.B. 639 (644)
9
Ellora Industries vs Banarsi Das Goela and Ors., AIR 1980 Delhi 254