Infringement & Passing Off
The rights and remedies available under the Trade Marks Act, 1999 are not only limited to registered marks but also extend to unregistered marks. On one hand, an action for infringement provided for under Section 29 of the Act involves establishing issues such as likelihood of confusion, deceptive marks, identical marks and dilution of marks. Whereas on the other, an action for passing off under Section 27(2) can be maintained by proving the classical trinity test, namely, the three elements: goodwill, misrepresentation and damage. It is pertinent to note that while they are two different concepts, the object that aims to be achieved in both suits remain the same i.e., the prevention of unauthorized use of a deceptively similar mark.
The different kinds of reliefs available under actions for infringement and passing off include interim injunction, permanent injunction, damages and/or delivery of infringing labels and marks for destruction or erasure. Generally, when a mark is registered the Plaintiff may combine his action for infringement along with an action for passing off provided he can prove both, just to ensure better protection.
Hindustan Unilever Ltd v. An Opposing Party
In the instant case, the Bombay High Court called out the practice of seeking separate reliefs of an injunction for passing off and infringement when pleadings were presented in respect of matters of trademark infringement. The issue arose, when Plaintiff framed a separate prayer for relief in infringement and a distinct prayer for relief in passing off, when in essence he only sought one thing i.e. an injunction against the defendant from using the impugned mark, label or artistic work. After a perusal of the records of the case, the Court categorically held that “setting out two separate prayers, one for infringement and one for passing off is a singularly unwise practice”. It observed how there is no one-to-one correspondence between a cause of action and a relief and that claiming separate reliefs is not logical since a defendant cannot be possibly under an injunction not to infringe, but would be set at liberty to pass off.
The Court also drew a parallel to cases where damages or appointment of a Court Receiver is prayed for, in suits of infringement and passing off. It pointed out that such prayers, instead of being separately asked for in both the suits, are merged as one to conclude that the same practice should be followed while praying for an injunction as well.
Additionally, the Court pondered over the case of S Syed Mohideen v. P Sulochana Bai to note how the Trademark law does not create any new rights per se. Rather in a contest between two registered proprietors, an action for infringement is based on an evaluation of superior common law rights only [as stated in Section 28(3) of Trade Marks Act, 1999]. Since the obvious purpose for which this determination takes place is to get an injunction, it necessarily follows that the prayer for relief must be framed as one simply for an injunction. That relief may be supported by establishing a cause of action either in infringement or passing off, or both.
Think Prayer. Think Logic.
Being hit by the rigours of logic and law, it is high time legal practitioners start reconsidering the manner in which they frame prayers seeking an injunction, particularly when they plead a case of both infringement and passing off.
This article has been authored by S.Sandhya
