Passing off in Design

The doctrine of passing off is generally known to apply to a trademark where it is technically used for protecting the goodwill of an unregistered trademark. This doctrine came to light during a case, i.e., Perry v Truefitt (in 1842). It was established that no one is allowed to sell his products by misrepresenting that the goods are made by another person who already has goodwill in the market. Thus, taking advantage of the goodwill of another person for personal gain.

Once said to be a common-law remedy available to Trademarks, passing off has been extended to Design infringement. We shall seek out the position of passing off in Design law through this article.

In the case of Smithkline Beecham Plc. And Ors. vs. Hindustan Lever Limited and Ors. on 26 November 1999

  • The plaintiff manufactures toothbrushes, and it was contended by the plaintiff that the defendants are using the same design for manufacturing the toothbrushes.
  • The plaintiffs instituted a suit in the Court praying for a decree for a permanent injunction preventing infringement of the toothbrush design registration and passing off.
  • One of the defendants submitted that there is no concept of passing off under the design law.
  • In this case, Hon’ble Delhi High Court held that the Passing off action is available under the Designs Act, 2000.

In the case of Mallcom (India) Limited & Anr vs. Rakesh Kumar & Ors on 19 March 2019

  • Where plaintiffs deal in safety equipment, including safety shoes, they duly registered their mark.
  • And the defendant is found to be dealing in the same product, using the mark and design similar to that of the plaintiffs. They are even placing the mark on the same place on the product as the plaintiffs' product.
  • The plaintiffs requested relief restraining trademark infringement, copyright, and passing off.
  • The decree was passed against the defendants and in favor of the plaintiffs.

The takeaway from the discussion can be:

  • The plaintiff has a registered design used by him as a trademark.
  • With such use, the business has acquired goodwill.
  • The defendants are doing misrepresentation by use of such design.

These form essential elements of passing off action. Therefore, it becomes pertinent to protect the design to avoid confusion in consumers' minds and maintain the goodwill of the business. The same has also been held in the case of Mohan Lal v Sona Paint.

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