PASSING OFF “No body has any right to represent his goods as the goods of somebody else.”1
Passing Off is a common law tort, which can be used to enforce the rights of an unregistered trademark holder. It prevents one person from misrepresenting his goods and services as that of another. It is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up and is likely to damage the goodwill and reputation of a business. In the case of Reckitt & Colman Ltd. V. Borden Inc.2 the three fundamentals or the classic trinity of Passing Off are reputation, misrepresentation, and damage to goodwill. The modern elements of Passing Off were laid down in the matter of Erven Warnink v. Townend & Sons3. They are
1) Misrepresentation 2) Made by person in course of trade 3) To prospective customers of his 4) Which is calculated to injure the business or goodwill of another trader 5) Which causes actual damage to business or goodwill of the trader by whom the action is brought. The concept of Passing Off has been extended over time. The concept of “personality rights” is an extended form of Passing Off. Celebrities use it as a means of enforcing their “personality rights” in common law. Another form of extended Passing Off is known as “Reverse Passing Off”. This is when the defendant claims the plaintiff’s work as his own.4
1 2
Lord Halsbury (1990) RPC 341 3 (1979)AC 731, 742 4 Bristol Conservatories Ltd. V. Conservatories Custom Built, (1998) RPC 455
In India, the Passing Off remedy is available in cases of unregistered trademarks. This is clearly been laid down in Section 27 of the Trademark Act, 1999. Section 27 states that: No action for infringement of unregistered trademark – (1) No person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered trademark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
With technological advances, particularly those relating to cyber space, domain names are also now entitled to equal protection as a trademark because they are more than a mere address. The rendering of Internet services is also entitled to protection the same way as goods, services are, and trademark law applies to activities on the Internet.5
The concept of passing off is a very valuable instrument to protect the rights of those trademarks holders who do not register their marks due to varying reasons. Thus, it recognizes that registration is not a “necessity” but it is always better to register your mark for practical purposes. This concept has been used on numerous instances and provides relief to those who don’t register their marks and it looks down upon those who try to pass off goods as those of another.
V.C. MATHEWS Advocate
5
Tata Sons v. Manu Kosari, 2001 (1) CTR 339(Del.)