The law of passing off can be summarized in one short general proposition-no man may “pass off” his goods as those of another. Further, in the absence of registration of a trademark or the same being under challenge, in India the law of passing off has to be resorted to for resolving various aspects related to violation of any trade mark. It is for this reason; generally it is a practice in India to file a composite suit for infringement as well as passing off, as the registrations are invariably challenged during the course of the proceedings of an infringement suit.
Passing off is a common law right, based on the principles of natural justice, which protects goodwill and reputation of a person and prevents dishonest or improper use of a goodwill by a third person in a trade mark. The term passing off has not been defined under the Trade Marks Act, 1999, and same is primarily based on “judge made” law of equity.
While analyzing a legal proposition as to the validity, longevity and legality of a trademark and its ownership, one has to look at the law relating to infringement as well as passing off.
It is further important to note that in case of a litigation pertaining to a trade mark the statutory right as well as the common law right become important. At times the common law rights may prevail over the rights acquired by registration of a trade mark.
Indian law of passing off is primarily based on following principles:
- First Adoption;
- Honest and Bonafide “Prior Adoption” and user; and
- Long, Continuous, Open, Concurrent, Honest and Uninterrupted User;
It may be noted that for establishing a case for passing of, a plaintiff may be required to prove:
- Goodwill and Reputation;
- Deception;
- Damage or likelihood of damage to the Plaintiff; and
- Proof of actual damages is not necessary.
It is reiterated that even an unregistered trade mark can seek protection of passing off under the Trade Marks Act, 1996.
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