Passing off of unregistered trademark under torts

1. Passing off
under Torts
for IPR
Rahi Ajabe-Alhat

2. What is the meaning of Passing Off?
any person sells his/her goods as the goods of another
person
The law of Passing Off is used to safeguard or protect the
reputation and goodwill attached to an unregistered
Trademark
When any Trademark which is already registered by the
owner and any kind of Infringement happens, then it
becomes a suit for Trademark Infringement, on the other
hand, if the Trademark is not registered by the owner and
Infringement happens in such case it becomes a case of
Passing Off.
The Passing Off of Trademark is not a statutory remedy;
instead, it is a common law remedy.
Perry v Truefitt(1842):"Medicated Mexican Balm"

3. Kinds of Passing off
Extended Reverse

4. What are the essential elements of Passing
Off of Trademark in India?
Misrepresentation
Goodwill
Damage

5. What are the remedies for Passing Off of Trademark in
India?
Anton Piller Order: The Anton Piller Orders are prior partial orders to inspect the premises of the defendant. The court may order the plaintiff in a case where the
defendant is likely to dispose or destroy the materials or substances which contain the Trademark of the plaintiff.
Mareva Injunction: In such an order of Mareva Injunction, the court has the power to freeze the assets of the defendant, where the property of the defendant is likely to
be canceled or dissolved, so any judgement granted against him will not be enforced.
Interlocutory
Injunction:
It is the most common form of an injunction that is ordered by the court. An interlocutory injunction acts to take certain action against the defendant
based on some former violation. An interlocutory injunction is an order to prohibit the continuous usage of the Trademark of the plaintiff by the
defendant, which is leading to an infringement of the unregistered Trademark of the plaintiff. The main objective of this order is to prevent one from
any further infringement of an unregistered Trademark.
Perpetual Injunction: Perpetual Injunction is an injunction that prohibits and prevents the defendant completely, for all time, from performing any such acts that violate the
exclusive rights of the owner of the unregistered or registered Trademark. Usually, a perpetual injunction is granted when the suit of Infringement is
finally settled by the court.
Infringing goods to
be destroyed:
A search and seizure order of the court prohibits and prevents the defendant from delivering all products or goods that are labelled or branded with
the brand name of the plaintiff. Here, the court can direct the defendant for the return of such related material accounts and also to destroy all such
goods or products resembling the products or goods of the plaintiff.
Sue for the damages
or seek to account
for lost profits:
The Damages provided to the real owner are compensation for the loss, which was incurred by the real owner. The loss can be recovered from the
defendant in the form of such compensations by the real owner of the Trademark. The monetary worth or value of loss for reputation or financial loss
of the brand of the owner is recovered under damages provided by the court. The court will award the total amount of the damage and account of lost
profits after taking into consideration the certain and actual loss of the owner of the brand because of the Passing Off.

6. What are the defenses available to the Infringing party for
Passing Off of Trademark in India?
The sign, name, or
other marks that are
sought to be withdrawn
should not be specific or
similar to the goods or
business of the plaintiff.
There is no existence of
goodwill in the mark
used by the infringing
party.
The plaintiff has already
given consent or
encouraged the use of
the mark.
A separate case of
Passing Off.
The products and
services or business of
the plaintiff are
completely different
from that of the
defendant.

7. What are the case laws related to Passing
Off of Trademark in India?
Britannia Industries Ltd. vs. ITC Ltd. 2017

8. Nirma Limited
v. Nimma
International
and Anr. 2010
Nirma(1979) vs
Nimma International
(passing off)
Nirma vs Nimson’s
Nima Care(Cosmetic
care)

9. Colgate Palmolive Company and Anr. v. Anchor
Health and Beauty Care Pvt. Ltd.