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Passing Off

Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another.

The concept of passing off has undergone changes in the course of time. At first it was restricted to the representation of one person's goods as those of another. Later it was extended to business and services. Subsequently it was further extended to professions and non-trading activities. Today it is applied to many forms of unfair trading and unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person or group of persons.

The basic question in this tort turns upon whether the defendants' conduct is such as to tend to mislead the public to believe that the defendants' business is the plaintiff's or to cause confusion between the business activities of the two.

The tort of passing off is sufficiently wide to give relief to charities engaged in trading type activities.

In British Diabetic Association V Diabetic Society 1, both the parties were charitable societies. Their names were deceptively similar. The words 'Association' and 'Society' were too close since they were similar in derivation and meaning and were not wholly dissimilar in form. Permanent injunction granted.

Elements Of Passing Off

The three fundamental elements of passing off are Reputation, Misrepresentation and Damage to goodwill. These three elements are also known as the CLASSICAL TRINITY, as restated by the House of Lords in the case of RECKITT & COLMAN LTD V BORDEN INC . It was stated in this case that in a suit for passing off the plaintiff must establish firstly, goodwill or reputation attached to his goods or services. Secondly he must prove a misrepresentation by the defendant to the public i.e. leading or likely to lead the public to believe that the goods and services offered by him are that of the plaintiff's. Lastly he must demonstrate that he has suffered a loss due to the belief that the defendant's goods and services are those of the plaintiff's.

MODERN ELEMENTS OF PASSING OFF - In the case Erven Warnink Vs. Townend 3 , Lord Diplock gave the essential modern characteristics of a passing off action. They are as follows: -

  1. Misrepresentation
  2. Made by a person in the course of trade
  3. To prospective customers of his or ultimate consumers of goods or services supplied by him.
  4. Which is calculated to injure the business or goodwill of another trader.
  5. Which causes actual damage to a business or goodwill of the trader by whom the action is brought.

The above concept of passing off can be explained with the help of few case laws: Honda Motors Co. Ltd V Charanjit Singh & Others 4

Facts: Plaintiff was using trademark "HONDA" in respect of automobiles and power equipments. Defendants started using the mark "HONDA" for its pressure cookers. Plaintiff bought an action against the defendants for passing of the business of the plaintiff.

Held: It was held that the use of the mark "Honda" by the defendants couldn't be said to be an honest adoption. Its usage by the defendant is likely to cause confusion in the minds of the public. The application of the plaintiff was allowed.

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