I SEMESTER PROJECT

THE NATIONAL LAW INSTITUTE UNIVERSITY, BHOPAL

PROJECT

on

Submitted by
Swati Giri
Enrolment number : A-2507
Roll number : 2022BALLB72
I Semester
B.A.LL.B. (Hons.)

Submitted to
Prof. (Dr.) Rajiv Khare

Date of Submission : 30 September 2022

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I SEMESTER PROJECT

DECLARATION

I, Swati Giri D/o Vinay Kumar Giri Roll Number 2022BALLB72 Enrollment Number A-
2507 thus certify that the Project titled "Passing off - a study in relation to liability in tort and
under trade mark law" is the result of my own independent research effort and was completed
under the supervision of Prof. Rajiv Khare. The footnotes and bibliography clearly and
totally credit the literature on which I relied for the purpose of this Project. The project is not
plagiarised, and all reasonable precautions have been made to prevent plagiarism. According
to the Turnitin Report, the similarity index is %. In case, my project is discovered to be
plagiarised, the course instructor shall have the complete liberty to urge me to rework the
Project. If I fail to follow the teacher's directions, my project may be sent to the Committee
Against the Use of Unfair Means, and I will abide by the Committee's judgement.

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ACKNOWLEDGEMENT

“It is my great honour to declare my profound thanks and obligation towards my lecturers for
their useful recommendations and constructive criticism, which enabled me to progress and
finish my project. Their helpful counsel and unfailing support kept me on track throughout
the endeavour.”

"I am grateful to Prof. (Dr.) V. Vijayakumar, Vice-Chancellor, National Law Institute

University, Bhopal, for providing us with the facilities and means, as well as for mentoring
me throughout the project work, and to Prof. Rajiv Khare, our Law of torts Professor, for
presenting me with this fantastic opportunity."

“I'm also thankful to the University's library and computer workers for supporting us in
discovering and choosing books from the university library. Finally, I'm thankful to my
family and friends for their support and encouragement, which made working on this project
a joy.”

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TABLE OF CONTENT

Table of Contents
DECLARATION.......................................................................................................................2

ACKNOWLEDGEMENT.........................................................................................................3

REVIEW OF LITERATURE....................................................................................................5

STATEMENT OF PROBLEM..................................................................................................6

HYPOTHESIS...........................................................................................................................6

METHODOLOGY.....................................................................................................................6

OBJECTIVES............................................................................................................................7

RESEARCH QUESTIONS........................................................................................................7

INTRODUCTION......................................................................................................................8

ORIGIN OF TORT OF PASSING OFF..................................................................................10

IN ENGLISH LAW.................................................................................................................10

ORIGIN OF TORT OF PASSING OFF..................................................................................12

IN INDIAN LAW....................................................................................................................12

ESSENTIALS OF PASSING OFF ACTION..........................................................................14

DIFFERENCE BETWEEN PASSING OFF AND INFRINGEMENT IN TRADEMARK. .15

REMEDIES UNDER PASSING OFF ACTION.....................................................................16

INJUNCTION..........................................................................................................................16

DAMAGES..............................................................................................................................17

JUDICIAL ANALYSIS OF PASSING OFF ACTION...........................................................18

DEFENCES IN PASSING OFF..............................................................................................19

CONCLUSION AND SUGGESTION....................................................................................21

BIBLIOGRAPHY....................................................................................................................22

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REVIEW OF LITERATURE

⦁Margreth Barrett, A Cause of Action for "Passing Off/Associational Marketing"

(2010) IP Theory: Vol. 1: Issue. 1, Article 1.
In this paper, Margreth Barrett intigrates some of her own views with the arguments and
suggestions offered by the other speakers in the Trademark Scholars Roundtable in order to
draw out a potential judicial strategy to regulate the sprawl. However, before addressing a
potential remedy, she tries to discuss the nature of the problem as well as some of its
fundamental causes before discussing any possible solution. She first discusses the issue and
lays the groundwork for her plan. Then she says that courts evaluate some particularly
difficult new types of trademark infringement allegations as "passing off/associational
marketing."

⦁ R.K. Bangia’s, THE LAW OF TORTS (2010) [22nd edn, Allahabad Law
Agency]
In this book passing off is explained in a brief manner according to the perspective of Indian
laws. The book says that passing off is a form of deception in which a merchant utilises
deceptive tactics to boost his profits & allows his goods to pass as the property of someone
else. "No one has the right to manifest his commodities as belonging to someone else." The
wrong of passing off is committed when someone uses the similar or identical title for his
goods as the plaintiff's or makes it look that they are the plaintiff's products through disguise.

⦁ J. M. Evans, Passing-off and the Problem of Product Simulation (1968) [Vol. 31,
The Modern Law Review]
This article explains Passing off according to the perspective of English law. It also looks on
the problems of passing off. This article says that the tort of passing- off holds a defendant
liable if he portrays his products or services in such a way that an intended buyer is likely to
confuse them with that of a plaintiff products with whom the defendant competes. The
plaintiff must also show that the qualities of his goods, which the defendant imitated in such a

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way as to cause confusion, have acquired a secondary significance by serving to designate the
products as coming from a single source.

STATEMENT OF PROBLEM

Passing off is widespread in rural as well as urban parts of India. This problem occurs
because the laws of trademark protection and the tort of passing off are not known to a large
number of people.

HYPOTHESIS

To minimise the cases of passing off, the laws regarding passing off under the trademark act
and tort should be advertised in a sample language and various efforts should be made to
make people aware of these laws.

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METHODOLOGY

The method of research used in this project work is doctrinal. The principles that have been
discussed are discussed with the help of relevant case laws and examples for better
understanding. Many books, internet sources, and databases have been searched to complete
and make this research effective.

OBJECTIVES

• The primary objective of this project is to analyse and understand the tort of passing
off.
• To study and understand the origin of the tort of passing off
• To analyse the essentials that constitute the tort of passing off.
• To analyse the remedies available for the tort of passing off

RESEARCH QUESTIONS

• What is the tort of passing off and what are its essentials?
• How did the law of tort of passing off originate?
• What is the difference between passing off and infringement?
• What are the remedies available for passing off?

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INTRODUCTION

“Trade is increasing at a faster pace as the economy expands. The Trade Mark is a term used
by businesses to associate them with the name by which their product is identified to the
general public in order to identify their items. The Trade Mark Act of 1999, as well as the
Trade Mark Rules of 2002, confers trade mark rights. Under these regulations, the owner of a
registered trade mark enjoys a plethora of rights. Does this mean that people who have not
registered their Trade Mark have no legal rights? That is not the case, however. The Principle
of Passing Off permits individuals who have not registered a trade mark to prohibit others
from using an identically comparable trade mark. This ideology is built on the premise that
no one has the power to represent their own goods as those of others. To acquire the remedy
of passing off, the plaintiff must prove that he is the owner of the mark, that it has established
recognition and goodwill, and that the defendant has committed misrepresentation as a
consequence of which the claimant has incurred considerable losses.”

“Passing off is a wrong, a common law tort which protects the goodwill of a trader from
misrepresentation. Misleading the public into believing falsely, that the brand being projected
was the same as a well known brand is a wrong and is known as the tort of “passing off”.”

“Passing Off in common law is a tort that preserves a trade mark owner's goodwill and
reputation from harm caused by defendant's deception. It is built on the premise that "a man
may not sell his own goods under the pretext of another man's commodities" 1 Passing off

1
N.R. Dongre v Whirpool Corporation, AIR 1995 Del 300

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occurs when a defendant employs the plaintiff's trade name, trademark, or any other identifier
to persuade potential customers to assume that the goods or services supplied by him are the
same as sold by the plaintiff's. The tort is premised on the defendant's dishonesty. The
deception is addressed at potential customers of items or services who are enticed to acquire
the goods on the idea that they are those
of the plaintiff. This might be achieved through the defendant's use of misleading or
deceptive trade names, marks, or other indicia in regard to such items or services.2
”
“Legally, classifying acts under this tort aims to protect the right of property that exists in
goodwill. Goodwill is defined as the part of business value over and above the value of
identifiable business assets. So basically it is an intangible asset.”

“The three principal components of passing off are Reputation, Misrepresentation and
Damage to goodwill. These three aspects are also known as the CLASSICAL TRINITY, as
repeated by the House of Lords in the case of Reckitt & Colman Ltd V Borden Inc 3 . It was
said in this instance that in an action for passing off the plaintiff must prove firstly, goodwill
or reputation related to his products or services. Secondly he must establish a deception by
the defendant to the public i.e. causing or likely to cause the public to think that the products
and services provided by him are those of the plaintiff's. Lastly he must establish that he has
incurred a loss owing to the belief that the defendant's products and services are those of the
plaintiff's.
The below are the fundamental criteria that must be proven in order to establish the tort of
passing off:
1)Deception,
2)Made in the course of business,
3)it should be in the consumer's zone and must result in the plaintiff's business being harmed.
This doctrinal project seeks to study and analyse the tort of passing off.”

2
Bansal Ashwini Kr., Law of Trade Marks in India, Centre of Law, Intellectual Property and Trade, 2006
3
Reckitt & Colman Ltd v Borden Inc [1990] 1 AII E.R. 873

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ORIGIN OF TORT OF PASSING OFF

IN ENGLISH LAW

“The idea of passing off has been existed since the seventeenth century, when the House of
Lords categorised it as a tort of fraud & defamation. This concept was discovered and refined
in the nineteenth century. In one instance, the House of Lords decided that "no man is
authorised to portray his products as being the products of another man; and no man is
permitted to use any logo, sign or symbol, gadget, or other means, by which, without making
a direct misrepresentation personally to a buyer who buys from him, he permits such
customer to tell a lie or to make a misrepresentation to someone else who is the end
consumer, he should not make a misrepresentation that his commodities are the commodities
of another person, either directly or via the means of some other person." As a consequence,
the prior idea of passing off was confined to the exploitation of a trade mark or trade name to
fool clients into thinking that the items or services delivered are those of the authorized
owner.”

“To a considerable degree, the notion of value was employed to understand the scope of
passing off. The overwhelming opinion was that value interfered to prevent what may have
turned into extortion if allowed to continue, as well as to safeguard exclusive rights. This
unique attitude pushed the value courts to award compensation rather than directives. This
stance was founded on the premise that, in such a tort, the respondent was a plaintiff's
operator. Later, in Cartier v. Carlile4, it was determined that a "man should be considered to
foresee" the normal consequences of his presentation, and that minor evidence of the
probability of misleading was sufficient

4
54 E.R. 1151

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to prove the off-base. In Edelsten v. Edelsten 5, the claim was made that only advising an
aggrieved party of their rights met the extortion criteria, and that a man may be found
accountable in such a case irrespective of whether his acts were obvious. Whatever the
situation may be, extortion has remained a key part of the tort. In most situations, when
misrepresentation was not established, an investigation into the harm caused was requested.
Finally, it was done in such a manner that no misrepresentation was necessary while
analysing such a case.”
“Following that, the Reckitt Colman6 case's conventional trinity test was generally upheld,
the scope of passing off was expanded, and the characteristics of passing off were established
in a case. Three elements must be shown in order to prove passing off: goodwill, deception
brought on by misrepresentation, and loss suffered by the owner as a consequence of
misrepresentation. These ideas became the tenets of passing off legislation in the UK.”
• GOODWILL: General goodwill and commercial goodwill are different. In a case,
the court used the following definition of goodwill: "Goodwill" is a term often used to
describe a fully developed customer connection whose business is valued because it is
likely to last. However, the term might indicate much more when used in a business
context. Goodwill is also referred to as "the attractive force that draws business," and
it extends to other domains where the brand or other is well-known in addition to
commercial relationships or one specific field. The one that adds value to the firm is
the one that results from a great lot of devotion and sacrifice. The following criteria
were developed in a case to determine goodwill: The first is the distinctive design that
sets the goods and services apart from competitors, and the owner has built a
reputation in the market through usage of the trademark.

• DECEPTION: According to the Supreme Court of Canada, misrepresentation

includes any dishonesty on the part of the defendant, as well as any unfair

business practises or unethical business goals. This concept also applies to a trader who
makes a false statement out of ignorance or carelessness.
In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd. 7 In this case the defendant manufacture
an underwear which named dawn as similar to the plaintiff’s manufactured underwear don,
5
Edelsten v. Edelsten: ChD 28 Jan 1863
6
[1990] UKHL 12
7
AIR 1998 Guj 247, (1999) 1 GLR 744

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which is creating confusion in the minds of people because the layout, get up and colour
combination is same to the plaintiff’s product.

• LOSS SUFFERED BY THE OWNER: It is believed that harm has happened and
the plaintiff is permitted to collect the cost of the loss if he can show that the loss of
goodwill was caused by misrepresentation made in the course of business that could
only confuse or mislead customers.

“The act of passing off is not entirely described in English law. A trademark may be
registered under the Trade Mark Act. The owner of the trademark has the exclusive right to
use it in Canada up until it is proven to be invalid, subject to sections 21, 32, and 67. While
not expressly referring to trademark protection, Section 7 specifies unfair business practises.

Provision:
(a) Offers trade mark owners a safeguard to encourage impartial competition in the market.
(a) Describes how goodwill created by the use of a trademark is protected.”

ORIGIN OF TORT OF PASSING OFF

IN INDIAN LAW

In India Passing off was a frequent practise even before the Trade Marks Act of 1940. It was
the only means of safeguarding trademark rights.
• Finding the name of the trade mark is the first step in bringing a case.
• The second need is to show that the trademark has gained recognition and goodwill.
• Third, the defendant had to prove that he had used the plaintiff's name as the basis for
his business name, passing off or attempting to pass off his goods as those of the
plaintiff.
The modern law of passing off, as well as its development as part of Common law, may be
stated as follows: It originated as a tort action to remedy the defendant's inappropriate activity

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in passing off his goods as the plaintiff's products by using the plaintiff's trade mark or trade
symbol to persuade prospective customers to assume that his products or company were those
of the plaintiff. The tort is committed when the defendant misrepresented the plaintiff's items
to possible customers of his products. Defendant reached this outcome via dishonesty and
fraudulent use of the plaintiff's trade names, marks, and other signs.
Passing off is covered under the Trade Marks Act of 1958 and the Trade Marks Act of 1999.
No action for infringement of an unregistered trade mark is authorised under Section 27
Trade Marks Act, 1999-
⦁ No one has the right to launch a case to prevent or seek damages for the
infringement of an unregistered trade mark.
⦁ Nothing in this Act affects a person's capacity to sue for passing off products or
services as their own or as benefits supplied by some other person or the remedies
available in such circumstances.
The prior person's rights and remedies are guaranteed under paragraph (2) of section 27. It
provides that afterwards, even if a user filed a trade mark application and got registration, the
prior user can still begin a passing off action according to Section 27(2).
"Section 27(2) indicates it very clearly that registration of a name in the trade mark Registry
is immaterial in a passing off action, and the simple existence of the name in the Register
does not indicate its use by the individual in whose identity the name has been registered,"
Justice Thakur wrote in a case.
In another instance the problem was whether a passing-off action could've been taken against
the registered owner of a Trade Mark. To prove that the registration of a trade mark granted
the registered owner an inalienable right to use the trade mark in relation to items for which
the trade mark was registered and to prohibit infringement in the way specified by the Act,
emphasis was focused on Sec. 28(1) of the 1958 Act. "The powers of action under Section 27
(2) of the 1958 Act are not limited by Section 28 (3) and Section 30 (1) (d) of the 1958 Act."
As a consequence, trademark registration would be worthless in a passing off prosecution.

As a consequence, trademark registration would be worthless in a passing off prosecution. In

actuality, registering a trademark does not provide the owner of the mark any extra rights
beyond those that already existed under common law before the mark was registered. Well
before it was subject to statute law, the right of goodwill and recognition in a trade mark was
recognised at common law. There was no clause for trade mark registration in India previous
to the creation of trade mark legislation. Only one method to earn a trade mark right was to
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utilise it. The privilege was protected by the 1999 Act as well, and it is recognised under
Sections 27 (2) and 33."

ESSENTIALS OF PASSING OFF ACTION

Whenever there is misrepresentation, and goodwill is damaged during the commerce and this
causes injury to the business or goodwill of the person who brings the case, the law of
passing off will apply.
In a number of circumstances, the aspects of passing – off are addressed and clarified:
⦁ False representation
⦁ During the business, done by a person.
⦁ To potential customers or final customers of his products or services
⦁ Which was meant to harm some other trader's trade or reputation (in the view that it was a
fairly foreseeable result)
⦁ Which led to genuine damage to a trader’s trade or reputation when the action was filed, or
would almost certainly do so in a quia timet action

The tort of passing off has 3 essential parts, which were described to as the "classical
trinity" in Harrods v. Harrodian School8 is:

• Reputation
• Deception
• Infliction of pain

The Delhi High Court in a case stated that the plaintiff in a passing off suit should prove the
characteristics described below:

⦁ The plaintiff's products, name, or mark have developed recognition or popularity.

“⦁A false representation made by the defendant, whether intentionally or unintentionally,

through the use of the plaintiff's name or sign or any other tactic or means, that gives rise or
8
1996 rpc 697

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is likely to result the buyer to genuinely think that the products or services rendered by the
defendant are the plaintiff's products or services; or that the products and services rendered
by the defendant are indeed the result of the plaintiff's affiliation.”

⦁ The plaintiff has experienced or is going to experience harm as a result of the defendant's
statements endangering the plaintiff's manifestation.

DIFFERENCE BETWEEN PASSING OFF AND INFRINGEMENT IN

TRADEMARK

A trademark infringement lawsuit seeks to defend just the trademark, but a trademark action
seeks to protect the trademark's goodwill and recognition. In order to establish infringement,
the plaintiff must demonstrate that the person possesses an identical trademark. The plaintiff
implies that the person's trademark is soundly or symbolically similar to the plaintiff's
trademark. When the essence of a brand is replicated with minimal alteration, the person is
responsible for trademark infringement. However, in the context of passing off, the defendant
must establish that adding small characteristics is sufficient to differentiate both trademarks.

Infringing of a trademark falls under a legislative recourse however, passing off comes under
recourses of common law. The plaintiff must have a registered trademark to sue any person
for infringement; but there is no necessity for the plaintiff to have a registered trademark to
sue any person for passing off. It is required to establish that the plaintiff has goodwill
associated to the brand in a passing off action, but it is suffice in a trademark infringement
case to show that the plaintiff has registered the trademark. Criminal prosecution for
infringement is straightforward, however criminal prosecution for passing off is slightly more
complex.

The difference between infringement and passing has been identified by the Supreme Court
of India in the case of Durga Dutt v. Navratna Pharmaceuticals Laboratories 9, as while an
9
AIR 1965 SC 980

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action for passing off is a common law remedy being in substance an action for deceit, i.e. a
passing off by a person of his own goods as the goods of another, it \sis not the gist of an
action for infringement. The action for infringement is a legislative remedy conferred to the
registered owner of a registered trade mark for the vindication of his exclusive rights to the
use of the trade mark in connection to certain products. The use by the defendant of the trade
mark of the plaintiff is not an essential in an action for passing off, but is the sine qua non
(absolute required) in the case of infringement.

REMEDIES UNDER PASSING OFF ACTION

In the occasion of infringement and passing off, Section 135(1)10 stipulates the remedies that
the court may provide to the plaintiff who has substantiated his suit:

“⦁ An injunction prohibiting any use of the trademark;

⦁ Damages or a profit account

If the circumstances set out in Section 135(3)11 are met, the judge would not give remedy in
the form of damages apart from nominal damages or an account of profits in the case of
blameless infringement or passing off; but

⦁ A decree for shipping of the infringing tags and marks for total annihilation or removal.

INJUNCTION

The Trade Marks Act, 1999 specifically grants the ability to obtain an injunction. The
conditions of Section 36 to 42 of the Specific Relief Act, 1963, as well as Order 39 Rule 1

10
Trade marks act, 1999
11
6 Section 135 (1) of TMMA, 1958

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and 2 coupled with Section 151 of the Code of Civil Procedure, regulate the issue of
injunctions in trade mark cases.

In a case where SPASMOFLEXON12 commenced manufacturing under the registered trade

name SPASO PROXYVON, the plaintiff-respondent filed action and was given an
injunction. The injunction was overturned by the single judge on appeal, but the decision was
reinstated by the division bench. The court must permit the parties to submit evidence before
issuing an injunction by the division bench, according to a Special leave petition filed in the
Supreme Court.

In another instance13, the Supreme Court ruled that an interim injunction is intended to
preserve the current order of things and that if such a decree is not issued, the plaintiff will
not be compensated correctly in terms of damages recoverable in the action, even if the
uncertainty is addressed in his best interests at the court hearing. The requirement for such
security must be evaluated against the defendant's need to be secured from the injury incurred
by his incapacity to exercise his own legal rights for which he could not be suitably repaid.

DAMAGES

The payment of compensation through damages to the plaintiff is designed to recompense

him for the injury he has incurred, while punitive damages are intended to prohibit a
troublemaker and others from participating in similar illegal action. Punitive damages are
definitely called for if an activity has a criminal tendency, so that the predisposition to breach
the law and infringe on the rights of others in order to generate profit is curbed. Punitive
damages are based on the notion of corrective justice, and as such, they must be granted in
suitable circumstances to convey a message to lawbreakers that the law does not perceive a
violation merely as an issue between opposing parties, but also includes individuals who are
not players in the dispute but are damaged. The plaintiff wasn't the only one who has been
affected in this case; readers of the magazine who assume it is released by the same
publishing sector have also been harmed.14
12
Aristo Pharmacaeuticals v. Wockhard, 1999 (Suppl.) Arb. LR 449 (SC)
13
Wander Ltd. v Antox India, 1991 PTC 1 (SC)
14
Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 at 6

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JUDICIAL ANALYSIS OF PASSING OFF ACTION

Other than Legislature, the Judiciary has also played a key role in strengthening the notion of
passing off. In the matter of Colgate Palmolive Company v. Anchor Health and Beauty
Care15, Both the plaintiffs and the defendants produce widely renowned toothpaste brands.
The plaintiffs sued the defendants for passing off. The allegation of the plaintiffs was that the
defendants’ use of colour and pattern of colours in their dental goods was dangerously similar
to the plaintiffs’. According to the plaintiffs the proportion of hues (red and white) used by
the defendants was practically comparable to that of the plaintiffs (1/3:2/3). The grounds for
bringing in such a case was that the plaintiffs were established in the Indian market since
1951, and had a significant goodwill in the nation, whereas the defendants had joined the
market only in 1996.

It was held by the court that though there cannot be any monopoly over colour, in a country
with a huge number of illiterate and semi-literate people, by marketing a new product with a
design closely resembling that of the older product, it is easy to create confusion in the minds
of the public, especially when a similar product has been prevailing in the market for close to
half a century. It was decided that the defendants were utilising the trade dress of the
plaintiffs. The court imposed an injuction, preventing the defendents from utilising the
red/white combination in the contested order. 16

The court imposed an injunction, preventing the defendants from utilising the red/white
combination in the contested order.

Another case SVS Oil Mills v. SVS Rajkumar 17, whereby the Madras High Court injuncted
the use of ‘SVS with R in tiny print’ trade mark finding it similar to recognised SVS trade
15
2003 (27) PTC 478
16
Tort of passing off, www.legalindia.in/tort-of-passing-off-2
17
2002 (24) PTC 330

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mark in yellow polythene plastic cover inserted in clear carrybag in connection to vegetable
oil.

The petitioner had not secured registration of the trade mark even though its sales were to the
tune of Rs. 31 Crores.

DEFENCES IN PASSING OFF

⦁ USE OF REGISTERED TRADEMARK

The existence of a registered trademark in regard to the goods or services will be a barrier to
a claim for passing off if the claimed passing off corresponds with the plaintiff's utilisation of
a registered trade mark in relation to the commodities or services of the registration. This is
owing to the fact that the plaintiff has a limited statutory right to use the mark in connection
with the commodities or services for which it is registered. If the aggrieved party asserts that
it is qualified for the check in need of the registrant, attention should be given to filing
proceedings to have the registration revoked.

⦁ USE OF INDIVIDUALS OWN NAME

An individual plaintiff has the right to use his or her own name, and the method in which
misunderstanding may occur does not include passing off as someone else. In any instance, if
there is a mess that is brought to the knowledge of that respondent, the petitioner is expected
to exercise reasonable care to restrict the picture offered in his or her lead in order to
minimise misunderstanding.

⦁ PLANTIFF’S OWN PRODUCTS

Using the aggrieved party's name or mark on items that are the offended party's distinctive
goods is not permissible. In any case, a merchant cannot pretend that the aggrieved party's
products are of a specific class or grade if they are not. For example, it is vital to sell 2nd rate
or broken quality items as the aggrieved party's unique products, or to offer the offended

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party's products in a considerably changed form as the first. The method in which customers
are informed of the distinction throughout the offer time may assist to prevent a conclusion of
Passing off.

Defences can be summarised below:

⦁ The title, sign, or other symbol whose use is requested to be prohibited is not
identifiable of the plaintiff's products or trade.

⦁ The person's use of the plaintiff's title, sign, or other symbol is not likely to cause
confusion about his products or services.

⦁ The defendant owns the right to use the title, mark, or any other symbol in question.

⦁ Exceptional instances of passing-off

⦁ Postponement, injunction, and acquiescence, misleading use of the mark or symbol,

false representation of facts, and dishonest business do not qualify the plaintiff for remedy.

⦁ The plaintiff's and defendant's products or businesses are completely varied.

⦁ Defendant's use of the disputed term in a genuine presentation of his products.

CONCLUSION AND SUGGESTION

“With the increase of competition and the development of the economy, trademark
registration has become more significant. To maintain one's reputation and goodwill, one
must register the name under which he sells his products, which is known as a trademark.
However, just because a trademark isn't registered doesn't mean it can't be utilised to preserve
one's rights or interests. The principle of passing off may be employed to do precisely that.

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Passing Off also falls under common law tort that shields a trade mark owner's goodwill and
reputation from injury caused by defendant's false representation. Passing off occurs when a
defendant utilises the plaintiff's trade title, trademark, or any other identifier to make potential
customers to assume that the plaintiff's goods or services are the same as plaintiff's. The tort
is founded on the defendant's dishonesty. The deception is intended at probable clients of
items or services who are enticed to acquire the products on the idea that they are those of the
plaintiff.”

“If the authorised person finds that the defendant is using his name, he may launch a case in
court, with the court's jurisdiction being the location where the other people lives or conducts
his trade and has incurred a loss. If he can establish that he caused damage to his reputation,
goodwill, or misrepresentation, he may be paid for the harm. He may also obtain an
injunction against the person who is continuing to use the name.

In India the copying of names, markings, signs & symbols is quite popular in rural and urban
places. People more frequently than not do not aware about the remedies provided in the
trade mark law or under the tort of passing off. To make the public aware of the laws
connected to passing off under trademark law or the tort of passing off government should
invest in the marketing of these laws. These rules may be communicated by means of T.V.
through advertising in a basic and easy manner. Different sorts of posters and booklets may
be created & distributed for boosting awareness of these rules.”

BIBLIOGRAPHY

BOOKS:

⦁ R.K. Bangia’s, THE LAW OF TORTS (2010) [22nd edn, Allahabad

Law Agency]

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⦁ Ashwini Kr Bansal., Law of Trade Marks in India, Center of Law,

Intellectual Property and Trade, 2006

JOURNALS:

⦁ Barrett M, A Cause of Action for "Passing Off/Associational

Marketing" (2010) IP Theory: Vol. 1: Issue. 1, Article 1.

⦁ Evans J.M, Passing-off and the Problem of Product Simulation (1968)

[Vol. 31, The Modern Law Review]

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