For example, the supreme court of canada has held that the doctrine of. The best to start is to tell you what passing off is. A casebook on the enforcement of intellectual property. Tort of passing off trademark in india international journal of law. Passing off occurs when a party presents their goods and services as the goods or services of someone else. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. Trademark protects the mark from any unauthorized use of the mark which shall cause confusion in the. It provides for what acts constitute passing off and infringement of trademarks, what are. If an alleged trademark could not be registered due to a lack of inherent distinctiveness or other grounds, common law or unregistered rights cannot be asserted in such marks in a statutory passingoff claim brought in the federal court. But the action against passing off of trade marks has only. In india a combined action for infringement and passing off is permissible. Dec 23, 2017 trademark infringement and passing off remedies is all we are going to see here. The concept of passing off has undergone changes in the course of time.
Whilst passing off claims can sometimes succeed where infringement actions based on the uk trade marks act would fail, the courts decision in this case shows. Such unregistered rights are protected under the common law action of passing off. An infringement suitaction is a statutory remedy available for enforcing the rights of a registered trademark. Oct 19, 2015 in common law countries such as england, australia and new zealand, passing off is a common law tort which can be used to enforce unregistered trade mark rights. Infringing upon trademark or copyright or engaging in passing. Keep your eye on this article to know the remedies for infringement and passin slideshare uses cookies to improve functionality and performance, and to provide you with relevant advertising. Pdf this paper discusses the principles of passing off and infringement action under the trademarks act, 1999. Intellectual property rights have been explained in. The protection given to unregistered trademarks in india is limited to action for passing off and criminal action under section 27 of the trade marks act, 1999. Differences between infringement and passing off registration. It provides for what acts constitute passing off and infringement of trademarks, what are the remedies available, who can sue and be sued and the defenses available in case of trademark violation.
Passing off under trademark an appraisal passing off is a common law tort, which can be used to enforce unregistered trademark rights. Trademark confusion and the tort of passing off cjam. What are the trademark infringement and passing off. There are two main legal causes of action that you have.
The cases of passing off now subsume a lot of other considerations of reputation, dishonesty or fairness. The law of passing off prevents one person from misrepresenting his goods or services as that of another. Yes, there is a difference between passing off and trade mark infringement. Passing off is usually found within the world of business and relates specifically to a misrepresentation made by one party which damages the goodwill of another party. The concept of passing off has undergone changes in. The owner of an unregistered trademark, trade name or other. Infringement is when there is a contravention or a violation of a specific act, law or agreement. The work is intended for those mainly in the developing world who are involved in the. Dec 23, 2019 trademark cases in which an act of passing off has occurred can generally be identified in reference to the common elements, referred to under english law as the classic trinity these comprise the reputation of the defendant for delivering a particular kind of good or service, an act of misrepresentation by the plaintiff, and the exacting of some degree of damages to the defendants. Passing off extends to unregistered trade marks which legislation otherwise would not protect. It begins with an overview of the general principles of trademark law in israel before discussing what is protected under trademark law. To successfully claim passing off, you must establish three key elements.
Due to the nature of trademark law as a consumer protection measure, there is some debate as to whether postsale confusion as in the case of a consumer knowingly purchasing counterfeit goods but fooling others into thinking they are the real thing should be an actionable trademark infringement or considered under the tort of passing off. At first it was restricted to the representation of one persons goods as those of another. In canada, passing off is both a common law tort and a statutory cause of action under the canadian trademarks act referring to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers. It should be emphasized that the views expressed are those of the author and not of wipo. See our other article for more information on the registration and infringement of trade marks. Research paper on infringement and passing off of trade marks. Mar 11, 20 a person claiming an action for passing off has to pass the classical trinity test which makes the claim difficult while any claim for infringement succeeds if the plaintiff is able to prove that the impugned trademark is a colourable imitation of the plaintiffs trademark. Pdf passing off and infringement of trademarks india. In india, the use of registered types of trademarks or any mark identical, or deceptively similar to the registered trademark, by any person who is not the registered proprietor, or license holder of the mark, with respect to the goods and services for which the mark is registered. Trademark law protects a trademark owners exclusive rights to use the mark, thereby preventing any unlawful use of the mark by an infringer. If this trend continues, many of the differences between the passing off and unfair competition regimes may eventually disappear. It refers to the misrepresentation of the goods or services one is offering as coming from another party. However, even the unregistered trademarks are also protected as the act itself provides that an action of passing off remedy is available for unregistered trademark.
Passing off is governed by the law of tort meaning that it concerns a dispute between two individuals or parties rather than an action being brought against an individual party by the state. An action for infringement can be initiated only if the trademark is registered under the trade mark act, 1999. Passing off action under trade mark law abstract with the growth of economy trades are increasing at the faster pace. It then considers the definition of a trademark, categories of marks, proof of secondary meaning, special issues and nontraditional trademarks, and grounds. Misrepresentation is the basis for the english tort of passing off and is based. These are reputation, misrepresentation and damage.
Narayanan, law of trade marks trade marks act, 1999 and passing off 5th ed. Tm infringement, passing off and tm dilution youtube. Cease and desist letter for trademark infringement, unfair. On the basis of the foregoing brief analysis of the jurisdiction of this court and of the pleadings and evidence before me, i conclude that the plaintiffs claim with respect to passing off cannot. Court, singapore trade marks registry and the indian. The tort of passing off and trade mark infringement. Passing off and infringement of trademarks india by.
Factors considered by court to adjudicate passing off in india. Passing off must be distinguished from an action for infringement which is open for registered trademarks only. Intellectual property rights have been explained in the following terms. Like protection of trademarks, passing off also prevents a person from misrepresenting its goods and services from that of the other. It has also considered whether an action of passing off of an unregistered trade mark which same is regulated by common law action also confers jurisdiction on. Passing off and infringement of trademarks india by manzoor.
Registration is the relevant criteria for such an action, while usage details are irrelevant. Mar 30, 2017 passing off occurs when one party presents their goods as the goods of another party. To recognize ones product the traders associate themselves with the name by which their product is known to the public is called as the trade mark. For passing off, brand strength in the marketplace is crucial to success. Passing off under trademark the concept of passing off has undergone changes in the course of time. Tort of passingoff project assignment for law of torts. On the other hand a person whose goods and services have been passed off by another as his own. A casebook on the enforcement of intellectual property rights. This article is concerned with the tort of passing off. Jurisdiction while filing suit for infringement or passing off in india.
Doc trademark and passing off ifeanyi okwara academia. For example, if pepsi tried to sell their soft drink as coke by using the same packaging and distributing the product through similar channels. Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees provided that such authorization was within the scope of the licence. Misusing the name, brand, logo, trademark, images, among other things, belonging to others may be a form of tortious infringement that is actionable under a variety of tortious forms of wrongdoing such as trademark infringement, infringement, passing off, among others, or even as a combination of many torts occuring together.
Putting passingoff in context in nigeria, a cause of action in passingoff forms part of the several aspects of the common law and the doctrines of equity 4 see the discussions of hon. Panasonic wins passing off case for packaging and product. Such passing off claims can take many forms such as for the trademark, the shape and configuration of the goods, or the getup or outward appearance of the. In the case of passing off, a rather longwinded definition by lord diplock outlines five essential requirements. The paper clearly attempts about the study of the infringement of trademark rights and remedies involved in it.
This false impression is created through use of another providers recognizable trademark, either by the production of an identical copy, or a closely comparable mark. Passing off and infringement of trademarks india papers in the. Goodwill is the most important aspect in a passing off action. A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a getup the whole external appearance or lookandfeel of a product, including any marks or other indicia used which is considered to be similar to that of another partys product, including any registered or unregistered trademarks. Action against infringement of trade mark has been made a statutory right under the trade marks. Trademark is a companys identity enabling a customer to distinguish products under that trademark according to the goodwill of the company and quality of the products. Subsequently it was further extended to professions and nontrading activities. To understand the differences between passing off and trademark infringement in india, we need to analyse the scope of trademark infringement and the trademarks act, 1999. Passing off passing off is a part of the law of contract which can be used to enforce unregistered trademark rights. The remedy of injunction is an effective remedy in preventing.
Remedies against infringement and passing off of a trademark in india. Infringement of trademark rights and remedies involved in it. Trademark infringement and passing off legal service india. This paper discusses the principles of passing off and infringement action under the trademarks act, 1999. Passing off of trademark in india looping the loop holes. With respect to trademarks, there is a violation when you use a trademark without the authorization of the owner. Passing off is tort law which is a civil wrong that causes someone else to suffer loss or harm. The tort of passing off exists both at common law and under section 7b of the trademarks act. In an action for passing off, only the bonafide usage of the trademark counts. As of exit day 31 january 2020 the uk is no longer an eu member state.
The law of passing off protects the goodwill of businesses by preventing competitors from passing off their goods as those of another. Passing off and the concept of goodwill in the law of contract. This chapter focuses on trademark law in israel as well as specific issues relevant to passing off. A passing off action is useful when a plaintiff seeks to protect a mark that is not registered under trademark legislation, or in cases involving attributes of goods and services that are not covered by trademark legislation. A casebook on the enforcement of intellectual property rights 4 th edition l. Passing is recognised as a common law tort which is used to protect and enforce unregistered trademarks in india. Infringing upon trademark or copyright or engaging in. Former fbi negotiator chris voss at the australia real estate conference duration.
Traditional and expanded concepts of passing off the concept of passing off lies at the heart of the system of trademark. A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a getup the whole external appearance or look and feel of a product, including any marks or other indicia used which is considered to be similar to that of another partys product, including any registered or unregistered trademarks. An action for infringement for registered trademark or tort of passing off for both registered as well as unregistered trademark are essentially two ways of achieving the same objective i. Passing off and trade mark infringement whats the difference. Passing off is a common law tort, which can be used to enforce unregistered trademark rights. Trade mark and passing off disputesoverview lexispsl.
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