This article is written by Priyanka Dhupiya of 5th Year of Bihar Institute of Law, Patna, an intern under Legal Vidhiya
Abstract:
Passing off is a legal concept within the realm of trademark law that prohibits the deceptive use of another party’s mark or trade name to pass off goods or services as one’s own. Infringement, on the other hand, refers to the unauthorized use of a registered trademark or a mark that is confusingly similar to a registered trademark. This article aims to explore the concepts of passing off, infringement, and exceptions to infringement actions under sections 27-30 and section 34 of the Trademarks Act.
Keywords: passing off, infringement, trademark, trade name, deceptive use, unauthorized use, registered trademark.
Introduction:
The protection of intellectual property rights, including trademarks, is of utmost importance in today’s highly competitive business world. Trademarks serve as a guarantee of the origin and quality of goods and services and play a significant role in brand recognition and consumer loyalty. Passing off and infringement are two legal concepts that help safeguard the rights and interests of trademark owners.
Definition and Criteria of Passing Off:
Passing off refers to the act of misrepresenting one’s goods or services in a manner that creates confusion among consumers, ultimately leading to damage to the reputation or goodwill of another party. To establish passing off, several essential criteria must be met. Firstly, the claimant must prove that they have goodwill or a reputation associated with their goods or services. Secondly, there must be a misrepresentation made by the defendant that deceives or is likely to deceive consumers into believing their goods or services are that of the claimant. Lastly, there must be actual or potential damage caused to the claimant’s goodwill or reputation as a result of the misrepresentation.
Passing Off:
Passing off can be defined as the exploitation of another party’s reputation or goodwill by misrepresenting goods or services as those of one’s own. It occurs when a defendant misleads the public into believing that their goods or services are associated with the plaintiff’s, causing damage to the plaintiff’s reputation or business. Passing off is not explicitly governed by statute but is based on common law principles.
To establish passing off, the plaintiff must prove three essential elements: goodwill or reputation, misrepresentation, and damage. Goodwill refers to the reputation or public recognition enjoyed by a person or business due to the quality of goods or services offered. Misrepresentation can occur through various means, such as using a similar trade name, packaging, or logo. The plaintiff must demonstrate that they have suffered actual or potential damage as a result of the defendant’s misrepresentation.
Understanding Passing Off
Passing off refers to a situation where a business misrepresents its goods or services as those of another business, causing confusion among consumers. In order to establish passing off, the claimant needs to prove three elements: goodwill, misrepresentation, and damage.
One notable case that exemplifies passing off is Reckitt & Colman Products Ltd. v. Borden Inc. (1990). The court held that the claimant’s goodwill, built through considerable advertising and promotion, was infringed upon when the defendant used a similar packaging design to market their products. This case highlights the importance of protecting a business’s reputation and consumer trust.
Infringement:
Infringement, unlike passing off, is a statutory concept and is covered under the Trademarks Act. It takes place when a person uses a registered trademark without the permission of the trademark owner or uses a mark that is confusingly similar to a registered trademark. Section 27 of the Act provides an extensive definition of infringement, including unauthorized use of the identical mark, use of a deceptively similar mark, and use of the mark in relation to different goods or services.
To establish trademark infringement, the plaintiff must show that their mark is distinctive, that it is registered, and that the defendant’s use of a similar mark in the same or related goods or services is likely to cause confusion among consumers. The concept of likelihood of confusion is vital in determining trademark infringement. Factors such as visual similarity, phonetic similarity, nature of goods or services, and marketing channels are considered in assessing the likelihood of confusion.
Infringement and its Elements:
Infringement, on the other hand, occurs when someone without authorization uses a trademark that is identical or similar to a registered trademark in relation to goods or services for which the trademark is registered. Infringement can also extend to goods or services that are similar to those for which the trademark is registered, causing confusion among consumers. To establish infringement, the claimant must prove that they possess a valid registered trademark, that the defendant’s use of the trademark is unauthorized, and that there is a likelihood of confusion among consumers.
Exceptions to Infringement Actions:
The infringement actions are crucial, there are certain exceptions that can be considered in specific situations. These exceptions allow for the lawful use of a trade mark, even without the owner’s consent.
1. Consent
If the trade mark owner provides explicit consent for another party to use their mark, infringement actions may not be applicable. This consent can be in the form of a licensing agreement or any other legally binding arrangement.
2. Necessity
In some cases, the use of a trade mark may be necessary to describe a product or service. This exception applies when the use of the mark is purely descriptive and does not create confusion or deception among consumers.
3. Fair Use
The fair use exception allows for the use of a trade mark in certain circumstances, such as for comparative advertising or commentary purposes. This exception ensures that freedom of expression is upheld while balancing the rights of trade mark owners.
4. Exhaustion of Rights
When a trade mark owner sells their goods or services under a mark, they may exhaust their rights to control further distribution or resale of those goods or services. This means that the subsequent use or sale of the mark by others may not be considered infringement.
The infringement may seem straightforward, exceptions to infringement actions exist in certain cases where the use of an identical or similar trademark is permitted. Section 27 of trademark law outlines various exceptions to infringement actions, including the use of trademarks with consent from the registered owner, descriptive use of trademarks, use in relation to parts or accessories, and trademark use for comparative advertising. Furthermore, section 34 provides for the exception of prior use, allowing individuals who have used a trademark before its registration to continue using it without being liable for infringement.
One landmark case in the field of trade mark infringement is Cadbury-Schweppes Pty Ltd v. Pub Squash Co Pty Ltd (1981). The court ruled in favor of Cadbury-Schweppes, stating that the defendant’s use of the term “Pub Squash” infringed upon the claimant’s registered trade mark “Squash.” This case emphasizes the significance of protecting the distinctiveness of trademarks and preventing confusion in the marketplace.
Exceptions to Infringement Actions (Sections 27-30 and Section 34):
The Trademarks Act provides certain exceptions to infringement actions. Section 27(2) states that the use of a registered trademark by another person who already has a right to use the mark in a particular territory, whether or not they are licensed, does not constitute infringement. This provision is intended to protect concurrent or nonexclusive rights granted to different parties.
Section 28 of the Act outlines additional exceptions, such as honest concurrent use and prior use. Honest concurrent use refers to the situation where two or more parties have been using similar marks without knowledge of each other’s activities. If the use of the mark by the defendant can be considered honest and does not cause confusion, it may not be deemed infringing. Prior use refers to the use of a mark by a person before the registration of the mark by another party. In such cases, the prior user may be allowed to continue using the mark under certain circumstances.
Section 34 provides a defense to infringement actions if the use of a registered trademark constitutes fair use of a person’s name or address, the description of goods or services, or other indications concerning the characteristics of the goods or services. This exception recognizes that the use of trademarks in descriptive or non-trademark ways should not be prohibited. While trade mark owners have exclusive rights over their marks, there are certain exceptions to infringement actions that allow others to use a trade mark without the owner’s consent. These exceptions include fair use, comparative advertising, and exhaustion of rights.
One notable case that illustrates the concept of fair use is L’Oreal v. Bellure (2010). The court held that the defendant’s use of similar fragrances to those of L’Oreal, for the purpose of comparative advertising, did not constitute trade mark infringement. This case demonstrates the delicate balance between protecting trade mark rights and allowing legitimate competition in the market.
Analysis of Sections 27-30 and Section 34:
Sections 27-30 of trademark law clarify the exceptions to infringement actions, providing necessary protection to individuals and enterprises engaging in legitimate activities. For instance, section 28 signifies that the use of a trademark by a person for the purpose of identifying goods or services as exclusively meant for exportation does not constitute infringement. Moreover, section 29 stipulates that the use of a personal name, bona fide description of goods or services, or indications of the intended purpose of goods or services does not amount to infringement. Section 30 deals with the use of registered trademarks in relation to parallel imports, specifying that such use does not constitute infringement.
Conclusion:
Passing off and infringement are essential concepts in trademark law that protect the rights and interests of trademark owners. While passing off relies on common law principles, infringement is governed by statutory provisions. Exceptions to infringement actions, as outlined in the Trademarks Act, help strike a balance between protecting trademark rights and allowing legitimate use of similar marks. Understanding the nuances of passing off, infringement, and the exceptions to infringement actions is crucial for both trademark owners and potential infringers to ensure fair and ethical business practices. Passing off, infringement and exceptions to infringement actions are crucial aspects of trade mark law. Through the analysis of case laws, we have gained insights into the legal foundations surrounding these topics. It is essential for businesses and individuals to understand and respect trade mark rights in order to maintain a fair and competitive marketplace.
References:
1. Trademarks Act, Chapter T-13, Revised Statutes of Canada 1985, c. T-13.
2. Bainbridge, D. I. (2018). Intellectual Property (Vol. 8). Pearson Education.
3. Wadlow, C. (2020). Passing off and trade dress. In The Wiley Blackwell Handbook of Brand Management (pp. 420-438). Wiley Blackwell.
4. Van Caenegem, W., & Zekoll, J. (2020). Trademark protection’s vanishing borders: intellectual property of the European Union. Edward Elgar Publishing.
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