Trademark infringement is done when any business or individual violates the exclusive right of the sole proprietor of the registered trademark whereas passing off is an actionable claim and is mainly used to protect the goodwill of unregistered trademark, this claim can only be filed under common law principle.
A registered trademark represents the quality and also the origin of the goods and services which are being provided and therefore anyone using the registered trademark commercially is likely to face trademark infringement case where if found to be the infringer they will have to pay damages to the proprietor of the trademark. The problem arises when an unregistered well-known trademark is infringed, as there are no provisions protecting an unregistered trademark under Indian trademark act.
Passing off is a common law principle, this principle state that any business or company should not sell their product on the pretence that they are their product. Passing off principle has not yet been adopted under any precise section in Indian trademark law but has been referred to in various. Primarily it was only restricted to the representation of one's goods as that of another but has undergone a lot of change. The concept has now been drawn-out to a profession as well as various forms of unfair trading where such activities cause damage to the goodwill of other products or services.
A good trademark is often the best salesman of the goods and is a visual symbol of goodwill and stamp of quality. Plaintiff before filing the suit of passing off under the law has to prove that they have attained goodwill in the marketplace for the trademark. The influence of the product may be good but it would be useless until its attraction is sufficient to bring customers to the source from which it originates. The probability of future injury would be adequate to cause a passing off action because the goodwill, hard work and reputation of the claimant are on the line.
A passing off action is a common law remedy available to the proprietor for an invasion of his right of property in the business.
No company or individual has right to represent his goods as the goods and services as that of another. In this case, the proprietor of the unregistered well-known trademark can file a suit for passing off as the remedy of trademark infringement under section 29 is only available to a registered user.
The trademark which has been misrepresented can be different from the product for which trademark has been registered and still passing off case can be maintained in the court of law.
Sunil Mittal and another V.S M/S Darzi on call: the plaintiff (Sunil Mittal) registered user of trademark instituted the case against the defendant (Darzi on call) for restraining the defendant from using the word ‘Darzi'. An interim injunction was granted in favor of plaintiff with the reason that they had prior use of the word mark Darzi. Court also noted that there was some level of dishonesty as defendant wanted to gain from the goodwill of the plaintiff.
A registered trademark provides an exclusive right to the proprietor of the trademark to use it commercially this implies that anyone who uses the trademark besides the owner of the trademark is infringing the rights of the owner. Section 27 of Indian trademark act provides that a person is entitled to file a suit against the person or company to prevent and recover any further damages.Trademark infringement claims mostly involve issues regarding the possibility of confusion, dilution of marks, deceptive marks. Confusion occurs in the situation where consumers are likely to be misled about marks being used by both the parties.
One of the essential features of the trademark is to prevent confusion among the consumers. A service mark and trademark identifies and distinguishes the sources of other services from each other. The law of trademarks is aimed to stop the competitors from puzzling customers so that they think that they are buying products and services from a trusted source when in reality, that is not the case.
A competitor who uses a trademark which is similar to a preexisting trademark can be stopped from doing so, by filing an application of trademark law; this usually happens only when the proprietor of the trademark files a suit or raises an objection.
Deceptive trademarks are marks which suggest a component that is likely to mislead consumers. A mark will be considered as deceptive under trademark law when a mark describes the character, quality, function, composition or use of the product incorrectly.
When the company or individual is using a trademark that is similar or identical and is being used commercially then, in that case, it will most likely cause infringement case against them. Identical and similar trademark is not registered under the trademark act because they cause confusion in the mind of consumers and investors.
This doctrine is adopted in Indian trademark law; 1999.This doctrine states that the owners of the well-known trademark have the power to prevent others from using their mark. Use of the mark by other businessman or company would minimize the value and distinctiveness of the famous mark.
In a recent case, a famous fashion brand Zara filed for trademark infringement against a restaurant using the same word mark. The main issue which was raised in the case was that, will there be confusion in the mind of consumers. Delhi high court considered it an infringement of trademark and passed an injunction order against the defendant.
A registered trademark is a brand name for the business and various startups which are just entering the market. Infringing registered trademarks is likely to cause confusion among the consumers and investors and would lead to damage in the earnings and the goodwill of the company or businesses. Any person who is a victim of misrepresentation of the trademark can either file a suit for infringement or passing off in the court of law the only difference which is there between them is that passing off is common law principle whereas infringement is a statutory provision.