Armour for the creators of unregistered products and
services. Passing off action in trademark as per section 27 of the Trademarks
Act, 1999 provides that no action for infringement will take place for an
unregistered trademark. When a trader makes a misrepresentation that harms the
plaintiff's goodwill, the passing-off action arises. Put simply, whenever a
trader makes a misrepresentation in the course of his or her business, it
injures the business of another trader and causes actual damage to the trader's
business or goodwill thereby resulting in the passing off action.
The object of this remedy as passing off is to protect the goodwill and
reputation of a business from unfair trade practices.
Obligation Of The Plaintiff To Prove Passing Off:
Case Law: Kaviraj Pandit Durga Dutt Sharma v/s Navaratna Pharmaceutical
- His Goodwill on business
- Defendant's misrepresentation to the customers
- Defendant's misrepresentation injured his business or goodwill
- He suffered damage to business and goodwill.
Air 1965 Sc 980
Appellant: initiated the preparation of Ayurvedic pharma and vended in the name
of 'Navaratnakalpa Pharmacy'.
The Manager and proprietor of two trademark namely
'Navaratna' and 'Navaratna Pharmaceutical laboratories'.
Appealant's Claim For Justification:
Appellant: approached to remove the registered trademark
Registrar of Trademark
directed to HC as respondent filed OS in DC
District Court -granted Decree of Injunction against Appellant
Appellant filed OS in HC of Travancore, Cochin- against decree of DC.
HC confirmed with the Decree of DC
Appellant filed two Special Leave Petition in SC against the Decree of HC
SC dismissed the appeal
(Kaviraj Pandit Durga Dutt Sharma)
- 'Navaratna' is the Sanskrit word that describe the ayurvedic preparation
of particular components and incapable of distinctiveness.
- 'Navaratna' not qualified to register under section 6(1)(d) of Trade
Marks Act, 1940 as it excludes those words of direct referrence and its
- 'Navaratna Pharmacy' the sanskrit word with the english words also there
is no distinctiveness.
- Rely on the Judgment India Electric Works ltd.,(1)(1)(1)49 C.W.N., held
on the fact that 'India' being a old mark and geographical word prohibited
to register under sec 6(1)(d) of Trade Marks Act,1940 (Sec-6: A trade mark
shall not be registered unless registration, it contains or consists of at
least one Of the following essential particulars, namely: d) one or more
words having no direct reference to the character or quality of the goods,
and not being, according to its ordinary signification, a geographical name
or sur-name or the name of a sect, caste or tribe in India )
- There exists dissimilarity of packing, variation of color and other
features with that of respondent's products.
- As per section 6(3)of the Act trade mark in use prior to February 25,
1937 is qualified for registration. (6(3) In determining whether a trade
mark is adapted to distinguish as aforesaid, the tribunal may have regard to
the extent to which- (a) the trade mark is inherently so adapted to
distinguish, and (b) by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact so adapted to distinguish; Provided
that in the case of a trade mark which has been continuously used (either by
the applicant for registration or by some predecessor in his business, and
either in its original form or with additions or alterations not
substantially affecting its ideutiliy) in relation to the same goods as
those in relation to which registration is applied for, during a period from
a date prior to the 25th day of February, 1937, to the date of application
for registra.tion, the Registrar shall not refuse registration by reason
only of the fact that the trade mark is not adapted to distinguish as
aforesaid, and may accept evidence of acquired distinctiveness as entitling
the trade mark to registration.)
- held that the act of Appellant is invasion of statutory right under
section 21 of Trademark Act.
- Concern about section 6(1) that have a great force in the argument
regarding the non-registered trademark. (Sec-6: A trade mark shall not be
registered unless registration, it contains or consists of at least one Of
the following essential particulars, namely; (a) the name of n company,
individual, or firm, represented in a special or particular manner; (b) the
signature of the applicant for registration or some predecessor in his
business ; (c) one or more invented words; (d) one or more words having no
direct reference to the character or quality of the goods, and not being,
according to its ordinary signification, a geographical name or sur-name or
the name of a sect, caste or tribe in India ; (e) any other distinctive
mark, provided that . a name, signature, or any word, other than such as
fall within the descriptions in the above clauses, shall not be registrable
except upon evidence of its distinctiveness.)
- Dealing with section 6(3) The SC held that the respondent's usage of
mark since 1926 was not disputed.
- Both Trademarks are so close visually, phonetically or otherwise. There
exists deceptive similarity. The Court declared as infringement. No further
evidence required to establish that the respondent rights are violated by
the act of appellant.
- Appellant's claim as difference in packing, get up and writing or marks
on the goods or in packet differs from the registered proprietor would be
immaterial. In case of passing off the appellant may escape from the
liability if he show that added matter is sufficient to distinguish his
goods from those of the plaintiff.
- Packing is relevant to the passing off but it is limited application in
case of the infringement of registered trademarks and the right and remedy
under section 21 for vindication of his exclusive right ot use it.
- Accept there is Deceptive Similarity and not interfere with the orders
of the lower courts.
- claim as honest concurrent user under section 10(2) of Trade marks
Act,1940 not raised in lower court. Hence, SC not entertain it.
- Hence, Appeal dismissed.
In this case, the Court given clear difference between infringement and passing
off and specified the non-applicability of passing off action against the
respondent's registered Trade mark 'Navaratna' and 'Navaratna Pharmaceuticals
DC - District Court
HC - High Court
OS - Original Suit
SC - Supreme Court
Written By: B.Monika
, Pursuing L.L.M. in G.L.C. TRICHY