What is the difference between infringement and passing off. On the basis of the foregoing brief analysis of the jurisdiction of this court and of the pleadings and evidence before me, i conclude that the plaintiffs claim with respect to passing off cannot. Protection of foreign unregistered trademarks 49 chapter 6 trademark infringement and unfair competition 51 a. Passing off under trademark an appraisal passing off is a common law tort, which can be used to enforce unregistered trademark rights. It has also considered whether an action of passing off of an unregistered trade mark which same is regulated by common law action also confers jurisdiction on. To understand the differences between passing off and trademark infringement in india, we need to analyse the scope of trademark infringement and the trademarks act, 1999. Oct 19, 2015 in common law countries such as england, australia and new zealand, passing off is a common law tort which can be used to enforce unregistered trade mark rights.
Infringement is when there is a contravention or a violation of a specific act, law or agreement. Passing off and infringement of trademarks india by. This could include, for instance, misleading advertising, discrediting of a competitor, enticing or poaching a key employee away, passingoff and trade secret misappropriation. Passing off is usually found within the world of business and relates specifically to a misrepresentation made by one party which damages the goodwill of another party. Relying on extended passing off in the context of article 84. The concept of passing off has undergone changes in the course of time. The legislature should give the laws related to passing off a concrete shape in the form of legislation and should try to remove the procedural infirmities and maintain consistency. The tort of passing off and trade mark infringement. If an alleged trademark could not be registered due to a lack of inherent distinctiveness or other grounds, common law or unregistered rights cannot be asserted in such marks in a statutory passingoff claim brought in the federal court. An action for infringement for registered trademark or tort of passing off for both registered as well as unregistered trademark are essentially two ways of achieving the same objective i. Trademark law protects a trademark owners exclusive rights to use the mark, thereby preventing any unlawful use of the mark by an infringer. Traditional and expanded concepts of passing off the concept of passing off lies at the heart of the system of trademark. Passing off occurs when one party presents their goods as the goods of another party. This could include, for instance, misleading advertising, discrediting of a competitor, enticing or poaching a key employee away, passing off and trade secret misappropriation.
A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a getup the whole external appearance or lookandfeel of a product, including any marks or other indicia used which is considered to be similar to that of another partys product, including any registered or unregistered trademarks. Pdf passing off and infringement of trademarks india. Passing off and infringement of trademark in india. A trademark owner may request to have customs clearance. Nov 21, 2011 trademarks and passing off a trademark is a sign which can distinguish your goods and services from those of your competitors and is capable of registration at the intellectual property office. The remedy of injunction is an effective remedy in preventing. Passing off is tort law which is a civil wrong that causes someone else to suffer loss or harm. As of exit day 31 january 2020 the uk is no longer an eu member state. Passing off and infringement of trademarks india by manzoor. Registration of a trademark under the trade marks act of 1999. In canada, passing off is both a common law tort and a statutory cause of action under the canadian trademarks act referring to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers.
Intellectual property rights have been explained in. The law of passing off is constantly evolving to combat new forms of misrepresentation. Trademark infringement and passing off remedies is all we are going to see here. In an action for passing off, only the bonafide usage of the trademark counts. Passing off and the concept of goodwill in the law of contract. This paper discusses the principles of passing off and infringement action under the trademarks act, 1999. If an alleged trademark could not be registered due to a lack of inherent distinctiveness or other grounds, common law or unregistered rights cannot be asserted in such marks in a statutory passing off claim brought in the federal court. Goodwill is the most important aspect in a passing off action.
Pdf passingoff and infringement of trademark in india. The concept of passing off has undergone changes in. With no other legal recourse, fentys passing off claim developed from. Panasonic wins passing off case for packaging and product designs. Panasonic wins passing off case for packaging and product. Trademark is a companys identity enabling a customer to distinguish products under that trademark according to the goodwill of the company and quality of the products. This article is concerned with the tort of passing off. Although the thai trademark act provides protection for passing off, filing a lawsuit to defend an ip owners unregistered rights can still pose certain challenges. It is clear that a legal action against passing off is not confined to the imitation of a trade mark. A misrepresentation made by a trader in the course of trade to prospective customers of his or ultimate consumers of goods or services supplied by him, which is calculated to injure the business or goodwill of another trader in the sense that this is a reasonably. If the trade mark offended against unregistered only an action for passing off is permissible. This is especially true where two registered trademarks are different, but the product packaging designs of. Trademark protects the mark from any unauthorized use of the mark which shall cause confusion in the.
Passing off is governed by the law of tort meaning that it concerns a dispute between two individuals or parties rather than an action being brought against an individual party by the state. A passing off action is useful when a plaintiff seeks to protect a mark that is not registered under trademark legislation, or in cases involving attributes of goods and services that are not covered by trademark legislation. The reputation of a business symbolized by a mark, under common law, can be protected only. Remedies against infringement and passing off of a. The common law has been kept intact by 1999 act as was done. Infringement is based on property acquired by registration of the trade mark, user of the mark not relevant. In common law countries such as england, australia and new zealand, passing off is a common law tort which can be used to enforce unregistered trade mark rights. Registration is the relevant criteria for such an action, while usage details are irrelevant. Apr 17, 2018 this lecture talks about tm infringement, passing off and tm dilution. This is especially true where two registered trademarks are different, but the product packaging designs of both marks are confusingly similar. Defendant must use the offending mark on the same goods for which plaintiffs mark is registered. Subsequently it was further extended to professions and nontrading activities.
It provides for what acts constitute passing off and infringement of trademarks, what are the remedies available, who can sue and be sued and the defenses available in case of trademark violation. Through registration, you have exclusive rights to use the trademark. In trademarks, it means the act of representing ones goods as the ones manufactured by another reputed manufacturer and selling it. Tort of passingoff project assignment for law of torts. These are reputation, misrepresentation and damage. Passing off must be distinguished from an action for infringement which is open for registered trademarks only. The work is intended for those mainly in the developing world who are involved in the. If this trend continues, many of the differences between the passing off and unfair competition regimes may eventually disappear. It should be emphasized that the views expressed are those of the author and not of wipo. Suit for passing off against registered trade mark under section 272 as per section 272 of the act, no man is entitled to represent his goods or business of another whether such representation is made by the use of any mark, name, sign, symbol, device or other means. Keep your eye on this article to know the remedies for infringement and passin slideshare uses cookies to improve functionality and performance, and to provide you with relevant advertising. For example, the supreme court of canada has held that the doctrine of.
The action for passing off is a private law action for misrepresentation. In simple words, if a person sells his goods as the goods of a. However, even the unregistered trademarks are also protected as the act itself provides that an action of passing off remedy is available for unregistered trademark. Passing off action under trade mark law abstract with the growth of economy trades are increasing at the faster pace. Passing off extends to unregistered trade marks which legislation otherwise would not protect. Passing off passing off is a part of the law of contract which can be used to enforce unregistered trademark rights. Putting passingoff in context in nigeria, a cause of action in passingoff forms part of the several aspects of the common law and the doctrines of equity 4 see the discussions of hon. Pdf this paper discusses the principles of passing off and infringement action under the trademarks act, 1999. A casebook on the enforcement of intellectual property. Aug 29, 2018 although the thai trademark act provides protection for passing off, filing a lawsuit to defend an ip owners unregistered rights can still pose certain challenges. It refers to the misrepresentation of the goods or services one is offering as coming from another party. The law of passing off prevents one person from misrepresenting his goods or services as that of another. This lecture talks about tm infringement, passing off and tm dilution. The paradigm case is that of selling goods under the pursuers name or mark or using his getup or setup i.
This false impression is created through use of another providers recognizable trademark, either by the production of an identical copy, or a closely comparable mark. Passing off is a civil offence which infringes the rights of another individual or business entity. To recognize ones product the traders associate themselves with the name by which their product is known to the public is called as the trade mark. There are two main legal causes of action that you have. Mar 08, 2017 nobody has any right to represent his goods as the goods of somebody else. Trademark law explained by advocate sanyog vyas duration. Criminal prosecution of infringers of trademark is also. Narayanan, law of trade marks trade marks act, 1999 and passing off 5th ed. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. An action for infringement can be initiated only if the trademark is registered under the trade mark act, 1999. Nobody has any right to represent his goods as the goods of somebody else. This is the underlying rule that has been laid down in the whole sphere of intellectual property rights. Yes, there is a difference between passing off and trade mark infringement.
Mar 11, 20 the concept of passing off has been governed by judicial pronouncements which have led to the subjective treatment of the actions for passing off. To successfully claim passing off, you must establish three key elements. Trademarks and passing off a trademark is a sign which can distinguish your goods and services from those of your competitors and is capable of registration at the intellectual property office. Trademark infringement passing off is the unauthorized use of a trademark or service mark on competing or related goods and services. Difference between infringement and passing off in case of infringement. If the marks are identical or deceptively similar no further proof. Passing off is a common law tort, which can be used to enforce unregistered trademark rights. See our other article for more information on the registration and infringement of trade marks. In the case of passing off, a rather longwinded definition by lord diplock outlines five essential requirements. Passing off and infringement of trademarks india ssrn. The concept of passing off has been governed by judicial pronouncements which have led to the subjective treatment of the actions for passing off. At first it was restricted to the representation of one persons goods as those of another. The best to start is to tell you what passing off is.
A trademark owner may request to have customs clearance suspended for goods suspected of being counterfeited. Differences between infringement and passing off registration. With respect to trademarks, there is a violation when you use a trademark without the authorization of the owner. Tort of passing off trademark in india international journal of law. Infringement is complete if a trade mark similar to that of registered proprietor is used. The protection given to unregistered trademarks in india is limited to action for passing off and criminal action under section 27 of the trade marks act, 1999. Due to the nature of trademark law as a consumer protection measure, there is some debate as to whether postsale confusion as in the case of a consumer knowingly purchasing counterfeit goods but fooling others into thinking they are the real thing should be an actionable trademark infringement or considered under the tort of passing off. Infringement and passing off of trademark in india ipleaders. What is the difference between trademark infringement and.
Intellectual property rights have been explained in the following terms. A casebook on the enforcement of intellectual property rights. Infringement is a remedy based on violation of statutory laws whereas passing off is based on common law. Tm infringement, passing off and tm dilution youtube. Passing off under trademark the concept of passing off has undergone changes in the course of time. Trademark infringement and passing off legal service india. Misrepresentation is the basis for the english tort of passing off and is based. And even where the action is based on the imitation of a trade mark, there is no.
In india a combined action for infringement and passing off is permissible. The law of passing off protects the goodwill of businesses by preventing competitors from passing off their goods as those of another. For passing off, brand strength in the marketplace is crucial to success. Trade marks used on similar goods or services, it constitutes infringement. Under section 5 of the trade marks act, 1999, the court grant relief in any suits for infringement or for passing off for injunction. Cease and desist letter for trademark infringement, unfair.
Passing off and trade mark infringement whats the difference. Passing off of trademark in india looping the loop holes. Mar 30, 2017 passing off occurs when one party presents their goods as the goods of another party. Both civil and criminal remedies are available in the infringement or passing off action. Trade mark and passing off disputesoverview lexispsl. Remedies against infringement and passing off of a trademark. The cases of passing off now subsume a lot of other considerations of reputation, dishonesty or fairness. The success of a lawsuit to stop the infringement depends on whether the defendants use causes a likelihood of confusion in the average consumer. Dec 23, 2017 trademark infringement and passing off remedies is all we are going to see here.
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