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Passing Off and Deceptive Similarity

The case at hand involves a dispute between two parties, each utilizing similar trademarks in the safety shoe industry. The plaintiff asserts rights over the trademark "TIGER," while the defendant employs "CDTIGER." Despite the defendant's registration of the trademark, the plaintiff claims prior usage and alleges infringement and passing off. This analysis delves into the legal intricacies surrounding trademark infringement and passing off under the Trademarks Act 1999, specifically focusing on Section 28(3) and the concept of deceptive similarity.

Trademark Infringement under Section 28(3) of the Trademarks Act 1999:
Section 28(3) of the Trademarks Act 1999 outlines the rights of a registered proprietor, affording protection against infringement. In the present case, the defendant holds registration for the trademark "CDTIGER," thereby invoking the provisions of Section 28(3) to assert their rights. The Court, guided by this provision, acknowledged the defendant's status as a registered proprietor, thereby limiting the plaintiff's ability to seek relief solely based on trademark infringement.

However, it is essential to note that the mere registration of a trademark does not preclude claims of passing off. Passing off elucidates the circumstances under which this Remedy can be granted , emphasizing factors such as similarity of marks, similarity of goods or services, likelihood of confusion, and the likelihood of detriment to the distinctive character or repute of the registered trademark. Despite the defendant's registration, the court must assess whether the plaintiff's rights have been encroached upon by considering these factors.

Passing Off and Deceptive Similarity:
Passing off is a common law remedy designed to protect the goodwill associated with a trader's business or goods. Unlike trademark infringement, passing off does not require registration of the trademark but rather focuses on the misrepresentation leading to confusion or deception in the minds of the consumers.

In the case at hand, the plaintiff, as the prior user of the trademark "TIGER," successfully argued passing off due to the deceptive similarity between the competing trademarks. The court recognized that while "CDTIGER" differs from "TIGER" by the inclusion of additional characters, the overall impression created by both marks is substantially similar. This deceptive similarity is likely to confuse consumers regarding the origin of the goods.

The case underscores the complexities inherent in trademark disputes, particularly in scenarios involving competing trademarks and issues of infringement and passing off. While the defendant's registration confers certain rights under Section 28(3) of the Trademarks Act 1999, it does not immunize against claims of passing off.

The Case Discussed:
Case Title: Mallcom India Limited Vs Shanti Udyog Weldsafe Private Limited and Ors
Judgment/Order Date: 10.04.2024
Case No: CS Comm 85 of 2024
Neutral Citation: NA
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Sanjeev Narula, H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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