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naLlonal Law lnsLlLuLe unlverslLy

8hopal

ro[ecL of 1orLs ll
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1Ok1 Ol P455lN6 Oll

ColJeJ by 5obmltteJ by

Dr ka[|v kumar khare 8a|bhaw Gah|aut

ko|| no 2009 8A LL8 06

Lnro||ment no A 0868

1r|mester II



DLCLAkA1ICN
'1he LexL reporLed ln Lhe pro[ecL ls Lhe ouL come of my own efforLs and no
parL of Lhls reporL has been copled ln any unauLhorlzed manner and no parL ln
lL has been lncorporaLed wlLhouL due acknowledgemenL'






8Al8PAW CAPLAu1










Acknow|edgement
Lvery work ls Lhe ouLcome of efforLs of many people and Lhls work ls no
excepLlon Lo lL l would llke Lo slncerely Lhank my respecLed LAW Cl 1C81S
Leacher Mr 8A!lv kuMA8 kPA8L who had helped me wlLh developlng Lhe
necessary undersLandlng of Lhe Loplc and for hls paLlence wlLhouL whlch Lhls
pro[ecL couldn'L have been compleLed
















[Z`WZ`_
INTRODUCTION- 3
STATEMENT OF PROBLEM 6
METHOD OF STUDY 6
ESSENTIALS OF PASSING OFF 7
GOODWILL 7
GENERAL PRINCIPLE 7
8UkDLN CI kCCI 9
DIIILkLNCL 8L1WLLN ASSING CI AND DLCLI1 10
kLMLDILS 10
DIFFERENCE BETWEEN INDIAN POSITION AND POSITION ABROAD- 11
CASES- 1
Erven Warnink BV and others v J Townend &Sons (Hull) Ltd and others- 1
Colgate Palmolive Co Ltd & Anr v Mr Patel and Anr- 1
ELLORA INDUSTRIES V BANARSI DASS 1
Naukr|com v Naukar|com 1
Current case 13
nonda Motor Co Ltd v Mr Charan[|t S|ngh Cthers 13



3


INTRODUCTION-
The tort oI passing oII is a part oI much wider canvas oI legal remedies controlling unIair
competitive practices. It is a tort based on common law and may in some respect be capable
oI development. The legal and economic object oI this tort is to provide protection Ior the
right oI property which exist not in a particular name ,mark ,or style but is an established
business or goodwill. The concept oI passing oII has undergone changes in the course oI
time. At Iirst it was restricted to the representation oI one person's goods as those oI another.
Later it was extended to business and services. Subsequently it was Iurther extended to
proIessions and non-trading activities. Today it is applied to many Iorms oI unIair trading and
unIair competition where the activities oI one person cause damage or injury to the goodwill
associated with the activities oI another person or group oI persons. So to sell merchandise or
carry on business under such a name ,mark ,description or otherwise in such a manner as to
mislead the public into believing that the merchandise or business is oI other person is a
wrong actionable at the suit oI that other person.
The action arose in the nineteenth century and depended upon the simple principle that a
person is not to sell his good or his services under the pretence that they are those oI others. It
is a wrong by which a trader uses deceptive devices to push up his sales and allow his goods
to pass oII under the impression that goods are oI some other person. II somebody uses the
same or similar name Ior his product as that oI the plaintiII or by the gate up makes it appear
that they are the plaintiII`s good ,the wrong oI passing oII is commited. The deIendants duty
arises evev without the prooI oI any knowledge oI intention to deceive. It is also not
nessesary to prove that any damage was caused. The purpose oI tort oI passing oII is to
protect the goodwill which a commercial may have earned, so that no other person can make
use oI same.
This law is designed to to protect traders against that Iorm oI unIair competition which
consist in acquiring Ior oneselI , by means oI Ialse or misleading devices, the beneIit oI
reputation already achieved by the rival traders. Normally, the deIendant seeks to acquire this
beneIit by passing oII his goods as and Ior the goods oI the plaintiII in one or more oI the
modes speciIied.
6


STATEMENT OF PROBLEM
Passing OII is no one is allowed to pass oII his goods and services as those oI others`.
Passing OII consists oI Passing OII one`s goods or services as being that oI another by
creating the likelihood oI conIusion between one`s own goods or services and those oI that
another. The law oI passing oII is a tort that seeks to protect victims where an individual or
company claims to produce goods or oIIer services as somebody else or with the express
permission oI somebody else in such a manner that deceives the consumer into believing that
they are purchasing the goods or services oI that individual or company that they trust and
recognize
The present study Iocuses on the essentials oI passing oII, varities oI passing oII, what is
goodwill ,what are the limit oI passing oII and remedies provide in law Ior the tort oI passing
oII. In this project the Iollowing question will be answered-
O What are the essentials oI passing oII ?
O What is meant by the term Goodwill ?
O What are the limits oI passing oII ?
O What are the remedies provided in law Ior the tort oI passing oI ?
O What is the general principle relating to passing oII ?


METHOD OF STUDY
The method oI study used in this project are mainly doctrinal and the source oI data are Irom
library source and the internet sources. The data has been take Irom the books and also
reliable government sites have been used


7




ESSENTIALS OF PASSING OFF
1o prove Lhe LorL of asslng off flve elemenLs or essenLlals have Lo be saLlsfled
O A mlsrepresenLaLlon
O Made by Lrader ln course of Lrade
O 1o prospecLlve cusLomers of hls or ulLlmaLe consumers of goods and sevlces supplled by hlm
O Whlch ls calculaLed Lo ln[ure Lhe buslness or goodwlll of anoLher Lrader and
O Whlch causes or LhreaLens acLual damage Lo a buslness or goodwlll of Lhe Lraders by whom
Lhe acLlon ls broughL


GOODWILL

Mere conIusion in the minds oI public is not enough to establish a case oI passing oII unless
there is risk oI damage to the claimants will and thereIore Iollows that the tort is not
committed iI that goodwill has not been established. The matter oI some signiIicance in
modern condition oI trade is the locality oI the goodwill and an action lies only iI the
claimant has goodwill here.

GENERAL PRINCIPLE

Passing OII is an actionable wrong Ior a trader so to conduct his business as to lead to the
belieI that his goods, services, or business, are the goods, services, or business oI another. In
order to succeed the goods or services or business must have: -


Distinctiveness: - It is a prerequisite in an action Ior passing oII that the plaintiII should
prove that the matter the use oI which is complained oI is distinctive oI his goods or services
or business. A plaintiII generates goodwill by the use oI a distinctive name, mark, description
or get up in relation to his goods, services or business. II the mark plaintiII is using is not
distinctive oI him, no actionable misrepresentation will arise by deIendant`s use oI it. Where
a word originally used only by one trader is employed by others in the same line oI business,
the test by which a decision is to be arrived at whether the word has become publici juris is
whether it may still have the effect of inducing the public to buy goods not made by the
original owner of the trade mark as if they were his goods.
Get up: - It is possible Ior the get up oI goods- the shape, colour and decoration oI
packaging etc. by means oI which goods or business premise are identiIied to become well
enough known as indicating those oI a particular trader Ior use oI that get up by others to
amount to Passing OII.
Descriptive Expressions: - It is not easy to establish goodwill in a name which consists oI
descriptive words and the law is reluctant to allow ordinary descriptive words in the English
language to be Ienced oII so as to become the private preserve oI one particular tradesperson.
Misrepresentations actionable as Passing Off: - There can be no passing oII without
misrepresentation, actual or anticipated. English law dose not provide a general remedy Ior
'unIair competition in the absence oI a misrepresentation under the guise oI an action oI
passing oII. Thus the mere similarity between the plaintiII`s and deIendant`s name oI goods
(even iI deliberate) dose not give rise a cause oI action, although there may be other remedies
arising out oI that similarity in registered trade mark inIringement (iI the name is registered)
and copyright or design right inIringement. Conversely, not every misrepresentation made by
a person about his good or services gives rise to an action Ior passing oII by someone
damaged thereby.
6 Trade marks and trade names: - II the trade mark is registered Ior the goods concerned,
any passing oII is likely to involve inIringement oI the rights given by registration also. There
may however be a successIul action Ior passing oII although the trade mark concerned is not
registered, iI it can be shown that the reputation oI mark is such that the use oI deIendant has
made oI it is in Iact deceptive. It is not necessary Ior the plaintiII to show that he himselI is
known to the public by name. All that is necessary to show that the trade or, the public
9

recognize the mark in question as denoting the goods oI a particular manuIacturer, so that a
substantial proportion oI the public buying under the mark in question would be likely to
except to get his goods.
Use of mark in different field: - Where a plaintiII and deIendant use a common or very
similar mark Ior diIIerent goods or services it is a question oI Iact whether or not the
plaintiII`s goodwill in the mark extends to the Iield in which the deIendant is using the mark
and whether the use by the deIendant will be such as to involve a misrepresentation.
8 Titles of literary works etc: - As a rule there can be no copyright in a mere title, one
person may not in a deceptive and injurious manner, employ or colourably imitate a title
already in use oI another. It is actionable to aIIix anyone`s name to a literary, dramatic,
musical or artistic work oI which he is not the author, so as to imply that the work is his or
adopted Irom a work oI his, and where the person concerned is an author oI established
reputation such an implication will be actionable as passing oII without actual use oI his
name.
9 Use of own name: - A surname is not a men`s legal property, and iI a man is called by
some other than his real name he may acquire his second name by reputation. In such case he
will not be restrained Irom using it honestly. But a man is not entitled to use his own name
dishonestly in order that his goods may be pass oII as and Ior the goods oI another. But in
order to deprive him oI the right there must be evidence oI dishonesty outside the mere use oI
name, e.g. a resemblance in the manner oI display oI the name or the concealment oI that part
oI that name which diIIers Irom the plaintiII`s by the use oI smaller character. Although an
individual trader is entitled to trade under his own name, even though he thereby gets the
beneIit oI the reputation oI a rival trader oI the same name, an incorporated company has not
the same right to use the names oI its shareholders.

BURDEN OF PROOF
In case oI tort oI passing oII the burden oI prooI rests on the plaintiII . In order to maintain
the suit oI passing oII the Iollowing things have to be proved by the plaintiII-
10

. Their goodwill exists in the mind oI the purchasing public.
2. The deIendant made a misrepresentation likely to deceive the public.
3. That misrepresentation damages the goodwill oI the claimant.

DIFFERENCE BETWEEN PASSING OF AND
DECEIT-
) In an action Ior Iraud or deceit ,there is deception oI the plaintiII who alleges that he
himselI has been misled by the statement, whereas in passing oII, the deception is not
that oI plaintiII but oI somebody else.\
2) In an action Ior deceit, the plaintiII claims compensation Ior the loss caused to him as
a consequence oI him being deceived. But in an action oI passing oII ,the plaintiII
seeks to protect his proprietary rights in his goodwill or business.which is threatened
by the deception or conIusion or the likelihood oI deception or conIusion oI other.
3) The wrong oI deceit is constituted when the plaintiII has been actually deceived,
where as an action Ior passing oII , the likelihood oI deception oI other is enough.
4) In deceit the action Ior damages is the only proper remedy where as in case oI tort oI
passing oII the remedy oI Injuction is also available.

REMEDIES
In the tort oI Passing oII, generally two kinds oI deIences are available-
)Injuction- An interim injunction may well determine the Iinal outcome. It may be done in a
qualiIied Iorm like restraining the deIendant Irom disposing oI his goods without suIIiciently
distinguishing them Irom the claimants
2)Damages- Damages maybe granted in respect oI losses to the claimant or in the alternative
an account oI proIit made by the deIendant Irom the passing oII.
11



DIFFERENCE BETWEEN INDIAN POSITION AND
POSITION ABROAD-
In India the tort oI passing oII in purview oI the image and goodwill oI Public Personalities is
in its nascent stage. Things in India are not as developed as they are in the rest oI the world in
regards to this Iorm oI Tortious Liability. However in the year 2002 things took a turn in
India as well. Tamil Movie Star Rajnikant raised a controversy amid much IanIare at the
release oI the Iilm 'Baba. He announced that he had decided to protect a particular sign that
he uses in his Iilms. Over the years the actor had developed a certain niche Ior himselI . He
had cultivated an image which included a peculiar manner oI lighting a cigarette, wearing
sunglasses in a certain manner etc. so that one was reminded oI Rajnikant when one saw it.
However this unique style oI the actor was being copied by diIIerent actors and corporations
in trying to pass oII their goods in the name and goodwill earned by the actor. This indeed
was a violation oI the publicity rights only inherent to the actor. This was a landmark in the
Indian Iield oI tortious liability and would go a long way in developing the tort oI passing oII.
In the United States, there is what is known as personality rights. These are broad, well-
accepted rights which allow an individual to exploit his character`. For example, under the
law oI the State oI Washington, it is expressly stated that every individual has the exclusive
property right in the use oI his or her name, voice, signature, photograph or likeness. Such a
right may be transIerred or licensed and does not expire upon death. Unauthorized use oI
personality rights is an inIringement and actionable.
In Singapore and the United Kingdom, such rights do not exist per se. Until recently,
ancillary rights were stretched to redress the situation. However, by deIinition such
contortions oIten resulted in weak and unsatisIactory remedies. For example, the law oI
copyright and registered trade marks may provide some relieI where a business has used,
without licence, a copyrighted photograph oI a personality or a registered trade mark which is
in the likeness oI the personality. Most unscrupulous businesses are, however, smart enough
1

not to make such elementary mistakes. In the circumstances, cases oI Ialse endorsements are
diIIicult to prevent

1

CASES-
Erven Warnink BV and others v J Townend &Sons (Hull) Ltd and others

-
Facts-
PlaintiII manuIactured alcoholic drink 'advocaat made oI eggs and spirit. This drink was
made exclusively almost in Netherland and sold in England Ior over 50 years and thus has
acquired reputation and good will. DeIndant also made an alcoholic drink oI dried eggs and
cynrus sherry marketed as 'old English Advocaat. As this drink had Sherry instead oI spirit
so its price was low. Also a general use can not distinguish between the two drinks. PlaintiII
Iiled an appeal .
Judgement-
The injunction was granted but the court oI appeal discharged the injunction. But late on
Iurther appeal injunction was restored.
Colgate Palmolive Co Ltd & Anr v Mr Patel and Anr

-
FACTS-
The PlaintiII claimed that they were the proprietors oI the well-known trademark
'COLGATE. The distinctive and prior use oI the get up oI the red and white colour scheme
had attained great reputation and goodwill. The plaintiII alleged that the deIendant`s product's
'AJANTA in red and white colour scheme was an imitation oI the plaintiII`s product.
ThereIore, the plaintiII Iiled a Suit Ior permanent injunction restraining inIringement oI
Trademark, 5,883411, unIair competition and damages claiming that the Iollowing rights had
been violated.
1nL IUDGLMLN1
lL was held LhaL 1rademark 8eglsLraLlon had been flled for Lhe word 'CCLCA1L' ln whlLe colour on
Lhe red background and noL Lhe red and whlLe colour scheme alone 1he essenLlal feaLure of Lhe
plalnLlffs mark was 'CCLCA1L' lnscrlbed ln whlLe colour on a red background and noL red and whlLe
colour comblnaLlon alone 1hus Lhe adopLlon of Lhe mark A!An1A wrlLLen ln whlLe colour on a red
background dld noL consLlLuLe lnfrlngemenL by Lhe defendanLs of Lhe plalnLlffs mark 8ed ls a baslc

() 2 ALL ER2
2
(2005) 3 PTC 583(Del)
1

colour and Lhe red whlLe colour comblnaLlon ls common Lo Lhe LooLhpasLe Lrade ln Lhe domesLlc
as well as Lhe lnLernaLlonal markeL and cannoL be monopollzed by any parLy Powever Lhe
defendanLs are llable Lo be resLralned for passlng off slnce Lhere was sufflclenL resemblance
beLween Lhe plalnLlffs and Lhe defendanLs producL 1herefore Lhe CourL sLaLed LhaL Lhere would be
no passlng off once Lhe producL ls markeLed by Lhe defendanLs as per Lhe approved packaglng
SubsLlLuLlon of gold for whlLe ln Lhe Plndl lnscrlpLlon A!An1A PLAL1P Lhe swlrls surroundlng
Lhe Plndl lnscrlpLlon ls Lo be lncorporaLed ln packaglng marked xx 1he defendanLs were permlLLed
Lo markeL Lhelr producL provlded lL ls as per packaglng modlfled by Lhls order Lo Lhe exLenL of Lhe
addlLlon of A[anLa PealLh ln Plndl ln Cold on Lhe packaglng
ELLORA INDUSTRIES V BANARSI DASS
3

FACTS-
The plaintiII s, Banarsi Dass and Brothers were registered propieters oI the trademark
'ELLORA in respect oI watches , time pieces ,clocks, and their parts. They had been selling
clocks under this trade name since 55. The deIendant manuIactured timepieces with
trademark 'Gargaon printed on the dial oI the timepieces. On the cardboard container
containing timepiece was printed :ELLORA INDUSTRIES GARGAON (PUNJAB). The
deIendant adopted this style in 2. The PlaintiII brought an Ior injunction.
UDGEMENT-
The plaintiII was granted injuction because it was clear case oI passing oII and also oI
plaintiIIs registered trademark.

Naukricom v Naukaricom

-
Facts- The plaintiIIs owned a portal Ior providing job opportunities name naukri.com. The
deIendants also opened another portal named naukari.com copying the entire Iormat oI the
website. The plaintiIIs moved Ior an injunction.

3
AIR 80 Delhi 254
4
(4) Bom CR 28

13

udgement: The court held that there can be no doubt that the two marks/domain names,
"RADIFF" oI the plaintiIIs and "REDIFF" oI the deIendants are almost similar. Two names
being almost similar in nature there is every possibility oI Internet user being conIused and
deceived in believing that both domain names belong to one common source and connection
although two belong to diIIerent persons. ThereIore, injunction was granted.

Current case-
Honda Motor Co Ltd v Mr Charanjit Singh & Others
5
-
Facts-
In this case the plaintiII were the Honda Motors and the deIendant were Mr. Charanjit Singh
and Others. The plaintiII were the Iamous car sellers oI Japan and had established Goodwill
in the market. Also the deIendant started selling cookers with the same trade name 'Honda.
This act oI the deIendant was done to gain the beneIit oI the goodwill oI the plaintiII`s trade
name 'Honda
udgment-
The Honourable Court dismissed the deIendants' allegation and held that the
DeIendants had adopted the well known mark 'Honda', to trade oII the goodwill and
reputation vested in the mark. Further, stray adoption oI an invented word does not give legal
right. The plaintiII has a prima Iacie case and the deIendants' continued wrongIul use oI the
mark gives rise to a recurring cause oI action.



5
2003 (26) PTC 1
16

BIBLIOGRAPHY
O WinIield & Zolovich- Torts
O Bangia, R.K. aw of Torts. 2008. Allahabad Law Agency.
O Course material,Law oI torts,2
nd
trimester
O http://www.amarjitassociates.com/articles/passing.htm
O www.dpahuja.com/pages/.../Annual20Litigation20Report202004.pdI