CHAPTER ± 2

³7KHSK\VLFDOSXUFKDVLQJDFWLRQ

is caused by a decision to

acquire a product;

the brand is there to serve as

a means of identifying the manufacturer.

The values of the brand will

reflect on the product,

but one must not forget

WKDWLWLVWKHSURGXFWWKDWLVERXJKW´

Nilson

BACKDROP AND HISTORICAL DEVELOPMENT

ON TRADEMARKS & PASSING OFF LAW

27
 CHAPTER -2
BACKDROP AND HISTORICAL DEVELOPMENT ON
TRADEMARKS & PASSING OFF LAW

Trademarks have existed for almost as long as trade itself. Though, not
H[DFWO\DVµWUDGHPDUNV¶ marks have been in existence from time immemorial in the
form of signs / symbols. It is said that the history of signs are as old as humans, may
be even older than humans, as humans have traced these signs / symbols. The
initial object of marking of signs / symbols on a commodity was to trace the owner
and bring him to books on grounds of liability, which now has become more
significant, owing its allegiance to the brand, goodwill and reputation of the goods
or services28.

2.1 EVOLUTION OF THE LAW OF MARKS AND TRADEMARKS

In earlier days, marks, as the symbol on a commodity was used for

transactional purpose to identify the original owner. Primary occupation being
grazing of animals and farming, the earliest of the marks were seen in animals, to
enable the owner to distinguish which animal belonged to him. For example, cattle
owners identified their cattle with a red-hot iron mark, which had a uniquely shaped
end and left a clear imprint on the skin of each of their animals for easy
identification with its owner. Similar was the mark in Bison and other animals.
From animals, the concept of ownership of marks spread to stonecutters and potters,
which saw its existence in the Middle age.

As the concept of ownership of goods saw its emergence among people, they
wanted to establish claim in all their products. The beginning of the Middle Age era
VDZ WKH HPHUJHQFH RI µ3RWWHUV PDUN¶ (marks in Pots). During the Greek and

28
Srinivasan Sruthi; Evolution of Trademark laws in India;
http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf; Assessed on 09.03.13

28
5RPDQSHULRGµ3RWWHUVPDUN¶ZDVXVHGWRLGHQWLI\WKHPDNHURIWKHSRWRUYHVVHO29.
Then came µ3URSULHWDU\PDUNV¶ where marks were affixed to determine ownership
and distinction of the goods from those of others in the market.

8QOLNH 3URSULHWDU\ PDUNV µ0HUFKDQW PDUNV¶ which were found to be in

existence in the 10th century, was affixed to goods to enable the owner to
distinguish his goods besides proving ownership rights on goods which were found
missing from acts of piracy, shipwrecks and other natural calamities.30 Besides, as a
measure to curb defective goods, sword manufacturers were required to use certain
marks on their goods to identify defective weapons. Marking on the goods served
dual purpose, both of ownership as well as punishment, for defective goods31.

From the origin of marks being affixed on animals, then moving down to
goods, the trend spread to food, as early as 12th century. During Henry III regime in
the year 1266, marks were endorsed in bread by the manufacturer of the bread,
µ%DNHU¶VPDUN¶ to emphasise on quality and to identify the baker32. To ensure strict
compliance, breads sold without the mark was confiscated and penalty was levied.
In the 13th century Silversmiths were required to mark their goods to avoid
duplication of goods.

Following thereafter, the 14th century saw the rise of a first systematic
intellectual property law in Venice on Patents. The law declared that if any person
who made any new and indigenous contrivance in the city which had the force of
law, every other person is forbidden to make identical and resemblance form thereto,
without the consent and license of the author upto ten years33. This is the first
intellectual property regulation in the world on Patents which was protected for ten
years. The Venetian statute also made mandatory to report all new inventions for

29
The History and Development of Trademark Law ; http://www.iip.or.jp/translation/ono/ch2.pdf;
Assessed on 09.03.13
30
Ibid
31
Plasticolor Molded Products v. Ford Motor Co., 713 F. Supp. 1329 (C.D. Cal. 1989)
32
Srinivasan Sruthi; Evolution of Trademark laws in India;
http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf; Assessed on 09.03.13
33
Ibid

29
protection against infringers. However, no such regulation on trademark protection
seems to be laid as a statute.

During the 14th and 15th FHQWXU\ µ3URGXFWLRQ PDUNV¶, were affixed by
merchant and craft guilds in their goods to differentiate inferior low quality ones. A
repository of goodwill among Guilds was created, who would do policing to remove
defective goods in the market. The production marks helped consumers to identify
and assign responsibility for inferior goods, such as goods short in weight, poor
quality materials, inferior craftsmanship etc.,34. This served dual purpose, to prevent
counterfeiting of goods and remove defective goods. Marking on the goods was
made mandatory and as the marks were affixed out of compulsion (as against self-
interest), they came to be known as µ3ROLFH PDUNV¶. Guilds using false marks on
their products were punished. Thus marks served an important economic function:
they enabled manufacturers to develop reputations for quality and assured customers
that products sold under the manufacturer¶s brand will live up to that reputation.

During the East India Company regime, the guild system started to
GLVLQWHJUDWH DQG IUHH WUDGLQJ ZDV UHFRJQLVHG  0DUNV ZKLFK XVHG WR µGHVLJQDWH
RZQHUVKLS¶ EHFDPH µV\PERO RI TXDOLW\¶ DQG FRPSXOVLRQ VRRQ JRW UHSODFed with
µQHFHVVLW\¶WRDIIL[WUDGHPDUNVRQWKHJRRGVDQGVHUYHGGXDOSXUSRVHLHRZQHUVKLS
and also prevention of counterfeit. The earliest of the cases on improper use of a
trademark occurred in 1618 in Southern v. How35, where a trademark on clothing
waVGXSHGWRDFXVWRPHUZKRERXJKWGHIHQGDQW¶VORZJUDGHFORWKLQJRQWKHSUHWH[W
WKDWLWZDVWKHSODLQWLII¶VEUDQG7KLVFDVHLVWKHVWDUWRIWKHMRXUQH\IRUWKHODZRn
Passing Off. Due to increase in the cases of deceit, armourers, metal workers, paper
makers, printers, weaves, smiths and all others used trademarks in their goods.

34
Srinivasan Sruthi; Evolution of Trademark laws in India;
http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf; Assessed on 13.03.2013
35
Tort on Passing Off; Project Assignment for Law of Torts. | Law Teacher;
http://www.lawteacher.net/business-law/essays/tort-of-passing-off-project-assignment-law-
essays.php#ftn21; Assessed on 13.10.2013

30
 To fulfil their informational objectives, trademarks required some form of
legal protection. The first statute on trademarks Factory, Manufacture and
Workplace Act, 1803 was passed in France, which was amended in 1809. This Act
UHFRJQLVHGSDVVLQJRIIRQH¶VRZQJRRGVRQDQRWKHU¶VVHDODVDFULPH7KHDPHQGHG
Act sought protection of trademarks in the same manner as that of property. Then
again in 1857, Manufacture and Goods Marks Act was passed which was the first
statute to establish a trademarks legal system based on registration. This led to the
passing of such statute in many other countries. By the beginning of 19th century,
marks began to identify source of goods and quality rather than being obligatory in
nature. The marks were used by traders for their own benefit. As business grew,
competitors began to copy the marks and pass off their goods. This mandated the
need for protection of marks against counterfeit and fraudulent marks. Added to
this, marks attained goodwill and people began to think of marks being distinctive
with the goods, which helped customers to identify the goods of the trader based on
the trademarks. So, till now, marks which served as quality, intruded in itself the
FRQFHSWRIµ*RRGZLOO¶

In India, the Indian Merchandise Act, 1889 (based on English Merchandise

Marks Act, 1887) was the first statute on trademarks. However, the word
µWUDGHPDUN¶ZDVQRWGHILQHGLQWKH$FWEXWLWZDVDVVLJQHGWKHmeaning as prevalent
in the Indian Penal Code, 1860. Registration was governed under the provisions of
Indian Registration Act, 1908 while the Specific Relief Act, 1877 was referred to
decide cases of infringement of mark. As the said Act did not lay down specific
provisions, the above anomalies led to the repealing of the Act by the Indian
Merchandise Act, 1889 (similar to the Trade Marks Act, 1940), which also failed to
cure the earlier defects.

To remove the abnormalities in the 1940 Act, a trademarks enquiry

committee was constituted in the year 1958 and the recommendations of this
Committee, led to the passing of the Trade and Merchandise Act 1958, which came
into effect on 25th November 1959. Under the 1958 Act, trademark was defined and
Registrar of Trademark was constituted with power to register marks.

31
 However, there were few concerns in the 1958 Act, especially on the
discrimination between foreign and Indian marks by the Registrar on matters of
Registration and Rectification of trademarks. Indian marks were more encouraged,
DV VHHQ LQ WKH WUDGHPDUN µ1RZ¶ RI $PHULFDQ FRPSDQ\ EHLQJ UHPRYHG IURP WKH
5HJLVWUDU IRU LWV UHSODFHPHQW E\ ,QGLDQ EUDQG µ1RZ¶36. Similarly, the Japanese
WUDGHPDUNµ7RVLED¶ZDVUHPRYHGIURPWKHUHJLVWHURQWKHJURXQGRInon use37. Thus
WKH$FWZDVFRQVLGHUHGDVDµQDWLRQDOLVW¶DFWJXDUGLQJDQGSURWHFWLQJGRPHVWLF
firms.

Despite all its shortcomings, the Trademark and Merchandise Act, 1958 was
in fact, a comprehensive piece of legislation in Indian history, having served its
purpose for more than forty (40) years. However, due to increase in globalisation of
trade and industry and encouraging foreign investments, a need was felt to simplify
and harmonize the trademark management system, which resulted in the Trademarks
Bill, 1993 being introduced. Simultaneous to these lines, India became a signatory to
the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), by
which it was bound to amend its national legislation to bring it in accordance with
international practices, conventions, protocols and treatise. This resulted in the
HQDFWPHQW RIWKH7UDGH0DUNV $FW ZKLFKKDGLWV RZQSRVLWLYHV DQGZDV µDW
SDU¶ZLWK75,36LQH[WHQGLQJHTXDOSURWHFWLRQWRLQWHUQDWLRQDOWUDGHPDUNVµ1DWLRQDO
TreatmHQW¶  UHFRJQLVLQJ µZHOO NQRZQ PDUNV¶ VLPSOLI\LQJ WKH SURFHGXUH IRU
registration of trademarks, constitution of appellate board, enhancing punishment,
besides expanding the scope of trademarks to services as well.

From the above history on the development of trademarks, it could be

determined from the above, that in the earlier days marks were used to establish
ownership rights of the proprietor, track the defective goods, impose penalty on the

36
R. J. Reynolds Tobacco Company v. I. T. C. Limited, judgement of the Delhi High Court, decided
on November 13, 1986. Printed in printed in Agarwal, K. L. and Sahni, K. L., (1997), Referred in
Pathak Akhileshwar; Changing Context of Trade Mark Protection in India: A Review of the Trade
Marks Act, 1999;
37
http://ezinearticles.com/?What-Are-the-Changes-in-Trademark-Act-1999-Over-Trademark-and-
Merchandise-Act-1958?&id=4435334; Assessed on 21.12.2013; Toshiba Corporation v. Toshiba
Appliances Company, 1994 (1) ARBLR 231; Hardie Trading Limited and Anr v. Addisons Paints
and Chemicals Limited, 1995 (S) ARBLR 513;

32
owner of defective goods and trace goods that were lost in transit, including those
recovered at sea. But today, marks help to identify the manufacturer of the goods,
ensure the quality and superiority of the goods, create a brand image among the
customers and enhance Goodwill and Reputation of the brand, increase the sales
volume of the goods in the market leading to healthy competition and also repose
trust and confidence earned by the mark among its customers. Thus, Modern marks
are considered to be more beneficial in nature rather than obligatory.

Trademark law thus aims to promote more competitive markets by

improving the quality of information in those markets. For example, if a trademark
VXFKDVµ1,.(¶ RUµ5HHERN¶RUµ$GLGDV¶ could be counterfeited and used by another
on his / her goods, there would be no incentive for the owners of NIKE or Reebok or
Adidas trademarks to produce high quality shoes and to expand consumer market
recognition of the products offered under the said marks. Hence it becomes
absolutely necessary to protect trademarks due to increased competition in the
market place and also to avoid free riding of the mark by others.

Modern marks, besides identifying ownership, tend more towards quality

and recognition among the consumers, ensuring efficient resource allocation and
highest quality products at competitive prices. Hence³Modern marks are an asset
for the manufacturer whereas in earlier times, the marks were considered as a
liability´38.

2.2 DEVELOPMENT OF PASSING OFF FROM TRADEMARKS LAW

There is no statutory cause for a Passing off action. The tort developed on an
adhoc basis, by way of decisions, the earliest one being that of Perry v. Truefit,
where Lord Langdale MR explained the meaning of Passing off as, µDPDQLVQRWWR
sell his own goods under the pretence that they arH WKH JRRGV RI DQRWKHU¶39.

38
http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf; Also referred in Ashwani K R
Bansal, UNCTAD, on trademark, pg 2, Assessed on 08.10.2013.
39
Perry v. Truefit (1842) 6 Beav. 66, at page 73

33
Thereafter, a number of judicial decisions paved way not to let off the wrongdoer
HVFDSHZLWKRXWOLDELOLW\7KHWHUP³3DVVLQJ2II´LVDOVRQRWGHILQHGXQGHUWKHSUHVHQW
Trade Marks Act, 1999 though is referred to in Sections 27(2), 134(1) (c) and 135 of
the said Act.

%ODFN¶V/DZ'LFWLRQDU\ defines Passing Off as, µWKHDFW RU DQLQVWDQFHRI

IDOVHO\UHSUHVHQWLQJRQH¶V RZQ SURGXFW DV WKDW RIDQRWKHULQ DQDWWHPSWWRGHFHLYH
potential buyers40.

Salmond defines it as ³7he gist of the concept of Passing Off is that the
goods are in effect telling a falsehood about themselves, are saying something about
themselves which is calculated to mislead. The law on this matter is designed to
protect traders against that form of unfair competition which consists in acquiring
for oneself, by means of false or misleading devices, the benefit of the reputation
already achieved by rival traders41,´ Salmond has also in his definition linked
3DVVLQJ2IIWRµDFWVRIIDOVHKRRGDQGXQIDLUFRPSHWLWLRQ¶

Winfield states, ³the law of passing-off arose to prevent unfair trading and
protect the property rights of a trader in his goodwill.................42´ while, Clerk &
Lindsell state, ³,WLVDQDFWLRQDEOHZURQJIRUDWUDGHUVRDVWRFRQGXFWKLVEXVLQHVV
as to lead to the belief that his goods, services or business are the goods, services or
EXVLQHVVRIDQRWKHU7KLVWRUWLVNQRZQDV³3DVVLQJ2II43´

Summarising the aforesaid definitions, Passing Off is a false representation

by a trader misleading its consumers on the goods sold. It encompasses within itself
unfair practices and hence falls under acts of unfair competition.

40
%ODFN¶V/DZ'LFWLRQDU\th edn, West Group, America 1999) at p 1146
41
Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 674-675
42
Ellora Industries v. Banarsi Das Goela And Ors., Delhi High Court, AIR 1980 Delhi 254
43
Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 675

34
 In Singer Manufacturing Co. v. Loog , the coram of James, LJ and Cotton
LJ observed, ³« QR PDQ LV HQWLWOHG WR UHSUHVHQW KLV JRRGV DV being the goods of
another man; and no man is permitted to use any mark, sign or symbol, device or
other means, whereby, without making a direct false representation himself to a
purchaser who purchases from him, he enables such purchaser to tell a lie or to
PDNHDIDOVHUHSUHVHQWDWLRQWRVRPHERG\HOVHZKRLVWKHXOWLPDWHFXVWRPHU«>+@H
PXVW QRW « PDNH GLUHFWO\ RU WKURXJK WKH PHGLXP RI DQRWKHU SHUVRQ D IDOVH
representation that his goods are the goods of another person. 44´

Thus, it could be summarised that Passing Off occurs when the defendant
FRQIXVHVRUGHFHLYHVWKHSXEOLFLQWREHOLHYLQJWKDWWKHGHIHQGDQW¶VEXVLQHVVSURGXFWV
or services are actually those of the plaintiff, thereby causing damage to the
SODLQWLII¶VJRRGZLOOand defaming his reputation. The purpose of Passing Off action
LV WR YLQGLFDWH WKH FODLPDQW¶V H[FOXVLYH ULJKW WR JRRGZLOO DQG WR SURWHFW LW DJDLQVW
GDPDJHDQGKHQFHDOOWKHGHILQLWLRQVOHDGWRWKHFRPPRQSRLQWRIµIDOVHKRRG¶DQG
µGHFHLW¶ E\ WKH WUDGHU LQ 3DVVLQJ 2II FDVHV  7KH courts have adopted these
definitions until date, in deciding Passing Off action, much less the definition in any
statute of legislature.

2.2.1 Passing Off ± An Offspring of Deceit

The tort of Passing Off is not of recent origin. The earliest of the case on
Passing Off was in Southern v. How45, in which a clothier used to sell clothes
setting his own mark to the cloth. Over a period of time, he gained reputation among
his customers. Subsequently, another clothier applied the same marks on his articles.
The original clothier brought out an action citing deception in trade, which was
accepted by the Court. This, though was more a case of deceit, but the principle of
Passing Off clearly started its journey from this case.

Later in the 18th century, all cases of Passing Off were classified as cases of
deceit, where the action was usually brought not by the deceived, but by the one
44
(1881) 18 ChD 395 pg 412
45
(1618) Pop. 143, 79 Eng. Rep. 1243 (K.B.)

35
whose mark was used to deceive, limiting the tort to cases where there was a proof
of bad faith. By around 1870, there existed a common law action for Passing Off
before equity courts where only damages could be awarded as a remedy and that too
only upon proof of fraud46. The first law which was a fusion of both law and equity
was the English Judicature Act, 1873, which was soon followed by the Trade Marks
Registration Act, 1875. This Act emphasized on the need to protect the mark by
way of registration and granted privileges to a registered mark. For encouraging
registration, it also provided that no one was entitled to initiate infringement action
unless and until the mark was duly registered. Subsequent amendment to this Act
was carried out under the Act of 1876, which granted the same rights to marks in use
before the 1875 Act.

Later, in the 19th century, it was decided that proof of fraud was not
necessary in such a wrong and it was from here that the actual tort of Passing Off
began building its own definition. The Trade Marks Act, 1905 granted statutory
basis for an action on infringement and also stated that nothing will affect the
Passing Off action. In Cartier v. Carlile47, it was decided that a ³PDQ PXVW EH
WDNHQWRLQWHQG´ the natural consequences of his act and mere proof of likelihood of
deception was sufficient to prove the wrong.

However, during the 20th century, the element of intent became less
predominant, and the concern for avoiding consumer confusion became
paramount48. Finally it was concluded gradually, that fraud need not be shown while
judging cases on Passing Off. The only requirement was the misuse by the defendant
of reputation established by the plaintiffs resulting in consumer confusion. The
position stands the same in India as well.

46
Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 675
47
(1862) 31 Beaven 292; http://www.lawteacher.net/business-law/essays/tort-of-passing-off-project-
assignment-law-essays.php#ftn22; Assessed on 13.10.2013
48
Nature and purpose of Trademark Protection;
http://www.lexisnexis.com/lawschool/study/understanding/pdf/TrademarkCh01.PDF; Assessed on
13.10.2013

36
 The tort of Passing Off developed as an offspring of deceit, with the twist
that it allows trade rivals, rather than deceived customers, to sue. Lord Parker in A G
Spadling & Bros v. A.W. Gamage Ltd49, VWDWHG WKDW WKH µEDVLV RI 3DVVLQJ 2II
DFWLRQ>LV@DIDOVHUHSUHVHQWDWLRQ¶EXWDFNQRZOHGJHGWKDWµLWZRXOGEHLPSRVVLEOHWR
enumerate or classify all the possible ways in which a man may make the false
UHSUHVHQWDWLRQ UHOLHGRQ¶ In classic terms, a trade name of a product will only be
protected through Passing Off if it is distinctive of the goods of a particular product,
or of a class of producers, but only so long as the products of that individual or class
have a character and reputation peculiar to the product. Passing Off is not intended
WR SURWHFW FRQVXPHU¶V LQWHUHVW LQ TXDOLW\ DVVXUDQFH DV QRWHG LQ Diageo North
America Inc. v. Intercontinental Brands Ltd50, where the court held , µ«WKHODZ
of passing off is there to protect the unlawful appropriation of goodwill through
misrepresentation. It is not there to guarantee to the general consumer the quality
RIZKDWEHEX\V¶Nevertheless, Passing Off action does afford an indirect protection
to a consumer, though does not give a direct cause of action.

Throughout the 19th century, fraudulent intent was an essential element in an

action of Passing Off51. In Edelsten v. Edelsten52, it was put forth that mere notice
of plaiQWLII¶VULJKWVVDWLVILHGWKHUHTXLUHPHQWRIIUDXGDQGDPDQFRXOGEHKHOGOLDEOH
in such a case whether or not his actions were honest. Whatever the case be, fraud
continued to remain an essential element in the tort. Where fraud was not proved,
usually an inquiry into the damage caused was ordered.

7KHGHYHORSPHQWRI3DVVLQJRIIDFWLRQKDVEHHQRQWKHEDVLVRIµ)UDXG¶The
concept of equity was largely used to realise the scope of Passing Off and this
particular view led to the equity courts to award compensation instead of
injunctions. This idea was based on the theory that, in such a tort, constructively, the

49
[1915] 32 RPC 273, 284
50
High Court of Justice (Chancery Division)(Arnold J.): 1-4, 7-8, 10, 11 December 2009 and 19
January [2010] EWHC 17 (Ch), [2010] R.P.C. 12
51
Nature and Purpose of Trademark Protection;
http://www.lexisnexis.com/lawschool/study/understanding/pdf/TrademarkCh01.PDF; Assessed on
13.10.13
52
1952 (3) SA 1 (A); http://www.lawteacher.net/business-law/essays/tort-of-passing-off-project-
assignment-law-essays.php#ftn22;Assessed on 23.10.2013

37
defendant was an agent of the plaintiff53. However today, fraud is no longer a pre-
requisite. It is therefore irrelevant whether or not the wrongdoer intended to pass off
his goods or services as those of others, or whether he acted maliciously, negligently
or fraudulently, as long as he has used the goodwill and reputation of the other
trader.

2.2.2 Passing Off and Trademark Infringement

Though Trademark and Passing Off are the most intertwined terms of
intellectual property, there are legally discernible differences between them. Actions
for infringement of a registered mark are governed by the Trademarks Act 1999,
where the proprietor of a registered mark has the exclusive right in the mark which
are infringed by its use without his consent and trademark infringement proceedings
may be brought only in respect of such registered marks. On the other hand, for
establishing a cause of action in Passing Off is normally higher from an evidential
SRLQW RI YLHZ VLQFH WKH SODLQWLII PXVW SURYH WKH µFODVVLFDO WULQLW\¶ RI *RRGZLOO
Misrepresentation and Damage.

The basic difference between Registered and Unregistered marks was

explained by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories as "an action for Passing Off is a
Common law remedy, being in substance an action for deceit, that is, a Passing Off
by a person of his own goods as those of another. But that is not the gist of an action
of infringement. The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication of the exclusive
right to use the trade mark .54" So an offence of Passing Off involves deceit or fraud
on the part of the offender, which is the bone of contention for proof while the same
is not the case in an action for infringement suit. Unlike infringement, in the case of
Passing Off, there involves no registration of the mark.

53
Tort on Passing Off; http://www.legalindia.in/tort-of-passing-off-2; Assessed on 3.10.2013
54
AIR 1965 SC 980

38
2.3 BIRTH OF MERCHANDISING RIGHTS IN INDIA

Merchandise are sale of commodities based on movies themes, characters or

images that are designed, produced and marketed for direct sale, and not connected
to established products or services. Thus, Merchandising of trademark is the
marketing technique where the goods or services are decorated and embellished with
established intellectual property with an aim that such embellishment will induce the
public to buy them55. A coffee mug carrying the image of Spider-man, a toy made in
the shape of He-man, a bag in the shape of Donald Duck, a pencil box with Ben 10
sticker are all instances of merchandising of various forms. If Character
Merchandising involves use of trademarks, copyrights and designs belonging to
others which have been used with the permission or license from the owner it is
perfectly legal and valid. On the contrary if images or characters used in the
products are without authorisation / consent of the owner, it is an infringement and
attracts the provisions of Passing Off law.

The concept of Character Merchandising originated in USA in 1930¶s in

Walt Disney Studio in Burbank in the State of California. Kay Kamen from Walt
Disney established a specialized department for secondary commercial exploitation
of some cartoon characters such as Mickey Mouse and Donald. The popularity of
some of the cartoon characters such as Mickey and Donald, led Kay Kamen from
Walt Disney for commercial exploitation of these characters, by granting a number
of licenses for use of these characters in various products deriving a good revenue.
This initiation from Kamen and his specialised department resulted in granting a
number of licenses for the manufacture as well as distribution of low-priced mass
marketing merchandise.

Though the concept of Character Merchandising originated in the USA,

Australian Courts were the first to recognise it, in the Crocodile Dundee case where
Paul Hogan created the famous character of Crocodile Dundee, which was authored
in the film and movie called Mick Crocodile Dundee, prior to which, the
55
http://www.lesi.org/les-nouvelles/les-nouvelles-online/march-2011/2011/05/01/character-
merchandising-international-experience-and-indian-perspective; Assessed on 18.10.2013

39
UHVSRQGHQWVRZQHGVKRSVZLWKQDPHµ'XQGHH&RXQWU\¶ in which they were selling
certain Australian goods featuring Australian lifestyle. An image of Koala was
created in which, it was carrying a knife in the same attire as it was by Paul Hogan
in the movie. As it was depicting his image and likeness, Paul Hogan sued
respondents for encashing on the fame of the film to promote their business. Pincus
J. established a clear representation of association with the images in the film, and
JUDQWHGLQMXQFWLRQLQ IDYRXURI3DXO +RJDQDQGUHVWUDLQHGWKHXVHRIµ'XQGHH¶ IRU
business promotion. He also observed that the wrong done was µZURQJIXO
appropriation of a reputation or more widely, wrongful association of goods with an
image properly belonging to the applicant. This case clarified that Celebrity rights
were protected in Australia and any act done to exploit their image will be dealt with
strongly by the courts.

In South East Asia, the exploitation of a character existed before 20th

century, by way of various religious sculptures represented in the form of sculptures,
puppets, toys, etc., 7KH FRQFHSW RI µFKDUDFWHUV¶ ZDV IXHOOHG E\ SRSXODU PDJD]LQHV
and comics, and getting extended to soft toys industry. In the late 19th century, some
industrialists created fictional characters which was used for packaging, then
extending to literary characters which slowly developed into a motion picture
cartoon like Tom & Jerry56.

In India, the phenomenon of Character Merchandising saw rapid

development in the 20th century, which resulted in the reproduction of images of
names or articles like Michelin Rubber Tier Company with Michelin Man, Murphy
radios with Murphy baby to Vodaphone with Zoo-Zoos and what not? With the
arrival of radio, films, television, and advertising, the concept of merchandising
became an industry in its own. The fever also caught up with animations, movies
and motion pictures, giving birth to renowned characters such as Alice, Rambo,
James Bond, Tarzan and slowly spread on to real life personalities like Michael
Jackson, Sachin Tendulkar, Amitabh Bachhan, etc., in the field of films, sportstars,
musicians, businessmen, WKHOLVWLQHYHU\ILHOGLVQHYHUHQGLQJ«
56
http://www.wipo.int/export/sites/www/copyright/en/activities/pdf/wo_inf_108.pdf; Assessed on
23.06.2014

40
2.3.1 Right to Privacy ± History & Development

Since Celebrities have a popular image in the society, people generally tend
to personalise them, as their friends and fans become curious about every personal
aspects of their lives ranging from their personal affairs to something as trivial as to
the clothes that they wear, the cosmetics they apply, the places they visit, etc.,
Hence, Celebrities try to control their personal information since the disclosure of
the same might put them in embarrassment, humiliation and thus make them feel
insecure. According to %ODFN¶V/DZ'LFWLRQDU\µULJKWWREHOHWDORQHWKHULJKWRID
person to be free from any unwarranted publicity; the right to live without any
unwarranted interference by the public in matters with which the public is not
necessDULO\FRQFHUQHG¶

Multi Media Service scandals involving Celebrities have become popular

among the public, one being cine star Kareena Kapoor getting into some intimate
moments with Saheed Kappoor, which was published in Mid Day newspaper 57. The
Supreme Court while taking action on a petition by Hindu, regarding the
Constitutional validity of Sec 499 of IPC, observed that Kareena-Saheed photo was
not in good taste. The court further hinted the need to create a balance between
public interest and defamation so that the freedom of expression of the newspaper
was not stretched beyond limits58.

Today, even newspapers can be held to be invading privacy, if it intrudes

XSRQ RQH¶V VHFOXVLRQ RU LI WKHUH KDV EHHQ D µSXEOLF GLVFORVXUH RI HPEDUUDVVLQJ
private life ZKLFK ZRXOG EH µRIIHQVLYH DQG REMHFWLRQDEOH WR D UHDVRQDEOH PDQ RI
ordinary sensibilities. In such a case the remedy would be in the form of an action
RI µLQYDVLRQ RI SULYDF\¶ RU DVVHUWLRQ RI IXQGDPHQWDO 5LJKW WR 3ULYDF\ DV D SDUW RI
Article 21 of the Constitution of India. The Indian courts on various occasions have
upheld the view that Right to Privacy is available to the citizens of India as an
ingredient in Right to Life provided in Article 21 of the Constitution. The courts
57
Sex, lies and MMS: Bollywood talking, http://www.digi-help.com/pub/indiam-mms-scandals.asp
58
Kareena-Saheed photos not in good taste: SC,
http://www.tribuneindia.com/2004/20041218/nation/html#3 (6 October 2006); Assessed on
02.07.2013

41
have expressly stated thaW µWKH 5LJKW WR 3ULYDF\ LV LPSOLFLW LQ WKH ULJKW WR OLIH DQG
OLEHUW\JXDUDQWHHGWRWKHFLWL]HQVRIWKLVFRXQWU\E\$UWLFOH,WLVDµULJKWWREHOHW
DORQH¶ $ FLWL]HQ KDV WKH ULJKW µWR VDIHJXDUG WKH SULYDF\ RI KLV RZQ KLV IDPLO\
marriage, procreation, motherhood, child bearing and education among other
PDWWHUV¶59.

One of the most popular judicial opinions on the Right to Privacy was held in
Barber v. Times Inc60, where a photographer took pictures of Dorthy Barber
delivering a baby boy. Ms Barber then ILOHGDVXLWRIµLQYDVLRQ RISULYDF\¶ DJDLQVW
Time Inc for unauthorised and forceful entry into her hospital room and
photographing her despite her protests and she was successful in her suit and the
FRXUW DZDUGHG 86  DV GDPDJHV DQG RSLQHG µin publishing details of private
matters, the media may report accurately and yet-at least on some occasions-may be
found liable for damages. Lawsuits for defamation will not stand where the media
have accurately reported the truth, but the media nevertheless could lose an action
for invasion of privacy based on similar fact situations. In such instances the truth
VRPHWLPHVKXUWV¶But this sort of situation is next to impossible in India.

Though, Celebrities are hired and paid by the company, certain traders,
engage in commercial exploitation of the Celebrities by affixing their photographs
on the products (without the consent of the Celebrity) and engage in Passing Off
their product on a wrong notion that the said Celebrity has endorsed the product.
Thus, the right of Celebrity is persistently being abused / infringed by way of
misappropriation, which is unhealthy to the Celebrity, the corporate / owner (with
whom he /she has claimed exclusivity) and also the consumer, who is misled by the
notice and purchase of the product.

2.3.2 5LJKWRI3XEOLFLW\RUWKHVRFDOOHGµ3HUVRQDOLW\5LJKWV¶LQ,QGLD

What aspects of human identity does the Right of Publicity protect? It

protects anything by which a certain human being can be identified. This covers
59
R Rajagopal v. State of TamilNadu, JT 1994 (6) SC 514
60
348 Mo1199, 159 SW 2d 291, 295 (1942)

42
everything: personal names, nicknames, stage and pen names, pictures and persona
in a role or characterization. It can also include physical objects which identify a
SHUVRQ«/HJHQGDU\%ROO\ZRRGDFWRU$PLWDEK%DFKFKDQUHFHQWO\OHQWKLVYRLFHWR
an unusual intellectual property rights case in the media and entertainment industry.
+HVSRNHRXWDJDLQVWWKHXQDXWKRULVHGXVHRIDVRXQGµDOLNHRIKLVGLVWLQFWLYHGHHS
baritone in an advertisement promoting a brand of gutka (chewing tobacco), as
association which was detrimental to his image. Previously, Rajinikant, another
legendary actor issued a legal notice warning against the imitation of his persona
and character traits for commercial gain, including unauthorised advertisements,
EHIRUHWKHUHOHDVHRIKLVILOPµ%DED¶7KHlegal notice published in various leading
UHJLRQDODQGQDWLRQDOQHZVSDSHUZDVDQDVVHUWLRQE\5DMQLNDQWKRIKLVµ3HUVRQDOLW\¶
rights. The right of an individual to command and control the use of his or her name,
image, likeness or other unequivocal aspects of his or her distinctiveness is
Personality Rights.

It is necessary to establish that fame is a form of merchandise i.e. an act

intended to promote the sale / popularity of a commodity or an activity. Simply put,
the Personality Right allows a Celebrity to charge for the use of his/her name,
likeness, photograph, voice or personality in order to acknowledge and safeguard the
labour, effort, resources expended by a person to create the ultimate tangible results
of a well-known brand or face and to allow such person alone to reap the rewards of
such intellectual investments through contractual compensation. The Personality
Right concerns with an intangible or non-physical harm and ownership of
intangibles. It is acknowledged as a form of property right. The law enables
protection against unscrupulous and unfair exploitation by others of the goodwill
associated with the Celebrity and consumer interest.

The law on Publicity is in its nascent stages in India. As commercialisation is

evolving, we have witnessed international Celebrities acquiring brand status and
registering their names as trademarks, - Michael Jackson, Elvis Presley and the
Spice Girls. In fact, creation of a Celebrity image has emerged at par with the
creation of brands and with Celebrity endorsements.

43
 In a country like India, where intellectual property laws are yet to mature,
ILQGLQJµIDNH¶RUµSKRQH\¶EDULWRQHVPDQQHULVPVDQGDµORRN¶HPDQDWLQJD&HOHEULW\
LV DV FRPPRQ DV ILQGLQJ µIDNH¶ JRRGV LQ WKH JUD\ PDUNHW  :KHQ PDUNHWHUV DUH
certaLQ WKDW &HOHEULW\¶V ORQJ KDQGV FDQQRW UHDFK WKHP WKH\ GR QRW KHVLWDWH WR
blatantly use and milk to the fullest the charisma of the Celebrity to endorse a lesser
known brand. Also, as the Personality Right in India is not protected by a statute, an
individual may apply for protection of their name, likeness and nicknames among
other things, with the trademark registry in order to obtain statutory protection
against misuse. But if the names, likeness or other specific characters of Celebrities
are infringed, the Celebrities have to invoke a Passing Off action.

2.4 CLASSICAL TRINITY PRINICPLES ± AN ESSENTIAL IN PASSING

OFF

Passing Off is a type of unfair competition claimed by owners of

unregistered trademarks to stop others from copying their trademark and
misrepresenting the public that the goods and services sold pertain to the owner
whose trademark is affixed. Passing Off is primarily a proprietary action, to protect
WKH µEXVLQHVV DQG JRRGZLOO¶ RI WKH SODLQWLII  ,W LV VLPLODU WR WKH FRQFHSW RI XQIDir
competition and trademark infringement in the United States of America. There are
WZRIRUPVRI3DVVLQJ2IIWKHµFODVVLFIRUP¶LQYROYLQJDWHVWVRPHWLPHVUHIHUUHGWR
DVWKHµ&ODVVLF7ULQLW\¶DVH[SODLQHGLQWKH-LI/HPRQFDVHDQGWKHµH[WHQGHGIRUP¶
as explained by Lord Diplock in the Dutch Advocatt case.

Erven Warwink BV v. Townend and Sons Limited 61, popularly known as

the Dutch Advocatt case was the first case to be discussed where the basic elements
of Passing Off was put forth. In this case, the court held that the term µ$GYRFDWW¶
had earned good reputation and goodwill, being recognised as a drink of good
TXDOLW\DQGWDVWHVRPHWKLQJZKLFKWKHGHIHQGDQW¶VSURGXFWGLGQRW FRPSO\ZLWKLW
having a different recipe and hence the defendants were found guilty of the tort of
61
[1980] RPC 31at 93 (HL); Referred in Intellectual Property Law, Edition: III, Published by Eastern
Law House, Kolkata, 2009, pg 215

44
Passing Off62. In this case, Lord Diplock brought out the essential characteristics
which must be present in order to create a valid cause of action for Passing Off,
namely,

ƒ a misrepresentation
ƒ made by a person in the course of trade
ƒ to prospective customers of his or ultimate customers of goods or services
supplied by him
ƒ which is calculated to injure the business or goodwill of another trade and
ƒ which causes actual damage to a business or goodwill of the trader by whom
the action is brought or (in a quia timet action63) will probably do so.

So the plaintiff, in order to bring out a case on Passing Off, has to prove the
above misrepresentation caused to his customers resulting in damage to the
goodwill. µ'DPDJH¶LVDQLPSRUWDQW criteria in any Passing Off action and should be
foreseeable.

As against this extended form, the µFODVVLFIRUP¶RI3DVVLQJ2IIHYROYHG in

Reckitt & Colman Products Ltd v. Borden 64 (popularly known as the Jif Lemon
case), where Lord Oliver of Aylmerton re formulated the requirements as,

ƒ firstly, he must establish a goodwill or reputation attached to the goods or

services which he supplies in the mind of the purchasing public by
association with the identifying get-up such that the get-up is recognized by
WKHSXEOLFDVGLVWLQFWLYHVSHFLILFDOO\RIWKHSODLQWLII¶VJRRGVRUVHUYLFHV

62
Tort of Passing Off; Project Assignment for Law of Torts. | Law Teacher;
http://www.lawteacher.net/business-law/essays/tort-of-passing-off-project-assignment-law-
essays.php#ftn21; Assessed on 13.10.2012
63
³4XLD7LPHW´LVDODWLQZRUGZKLFKPHDQV³EHFDXVHKHIHDUVRUDSSUHKHQGV´,QOHJDOWHUPLQRORJ\
DV GHILQHG LQ 2VERUQH¶V &RQFLVH Law Dictionary, it is an action by which a person may obtain an
injunction to prevent or restrain some threatened act being done which, if done, would cause him
substantial damage and for which money would be no adequate or sufficient remedy. [Narayanan P S,
Intellectual Property Law in India, Edition II , Published by Gogia Law Publications, Hyderabad,
Reprint 2004, pg 429]
64
[1990] RPC 341 at 406 (HL)

45
 ƒ secondly, he must demonstrate a misrepresentation by the defendant to the
public leading or likely to lead the public to believe that goods or services
offered by him are the goods or services of the plaintiff

ƒ thirdly, he must demonstrate that he suffers or in a quia timet action that he

is likely to suffer damage by reason of the erroneous belief engendered by
WKHGHIHQGDQW¶VPLVUHSUHVHQWDWLRQWKDWWKHVRXUFHRIWKHGHIHQGDQW¶Vgoods or
services is the same as the source of those offered by the plaintiff.

To provide with a brief facts of this case, the plaintiff was a manufacturer of
lemon juice and since 1956, had been selling the MXLFH XQGHU WKH QDPH µ-LI¶, in
plastic containers resembling real lemons. Eventually, the public identified the
natural plastic lemon container with the Jif brand of lemon juice. The defendant sold
its concentrated lemon juice in its lemon-shaped plastic container under its own
EUDQG FDOOHG µ5HD/HPRQ¶ 7KH OHPRQ-shaped ReaLemon product was also very
popular in the US and then moved onto UK when Borden began selling its
ReaLemon product in its lemon-shaped container in the UK.

Reckitt & Colman became concerned and filed a lawsuit to stop the
American company from using his brand. Being successful in the lower courts,
Borden took the case to the House of Lords, where the court observed, Reckitt &
Colman's survey evidence showing that "a housewife presented with a display of
these products in close juxtaposition would be likely to pick up the [ReaLemon]
product in the belief that what she was buying was the respondents' Jif lemon juice.
Concluding that the three elements of Passing Off are satisfied, the Lords affirmed
the IDFWWKDWWKHEUDQG³-LI´ZDV identified by the shape of its container and not by its
label provided the ultimate evidence.

If we carefully analyse the Jif Lemon case, though, Reckitt & Colman
claimed victory, but the path to victory was cumbersome because the company did
not register its trademark. Had it registered, the case would have been much simpler
to prove. 5DWKHU WKH PDUN µ-LI /HPRQ¶ ZDV XVHG since 1956 without registration,

46
because had they applied to register the Jif lemon as a trademark, the application
would have been rejected by the Registrar. This is because the mark did not satisfy
WKH FULWHULD RI µGLVWLQFWLYHQHVV¶ EXW ZDV a symbol of the goods or services it
promotes, which does not qualify for registration under the Trademarks Act.

As the Jif lemon is a symbol of lemon and lemon juice, no one can claim
exclusivity over it and hence it cannot be subject to registration. Had it been
registered, it would create monopoly over the mark and prevent others from using a
symbol of a lemon to sell lemon or lemon juice65. Thus, Reckitt & Colman could
only resort to a Passing Off action in their fight against ReaLemon, thus marking the
principles of Passing Off.

TKHµ&ODVVLFDOWULQLW\¶LVPRUHRIWHQXVHG in courts to determine Passing Off

actions, given its relative simplicity and the three principles of Goodwill,
Misrepresentation and Damage for proof.

2.4.1 Goodwill & Reputation

The classic tort of Passing Off was originally intended to protect against rival
traders in the same field of business thereby passing off their products as the
products of another competitor µWUDGLQJ JRRGZLOO¶ ZLWK LWV UDWLRQDOH EHLQJ
prevention of commercial dishonesty66. Goodwill is not something which can be
conveyed or held in gross; it is something which attaches to a business67. It is
generally accepted principle that the threshold issue is usually a question of whether
the plaintiff has the requisite local goodwill or reputation to support an action in
Passing Off where it is shown that a substantial number of people would consider
the name, get-up or other indicia to be distinctive of the goods or services of the
plaintiff.

65
Tanner De Witt; Passing Off; http://www.tannerdewitt.com/media/publications/passing-off.php;
66
Reddyaway (Frank) & Co ltd v. George Banham & Co Ltd [1896] AC 199
67
Murray (1998) 193 CLR 605m 615 (citing Geraghty v Minter (1979) 142 CLR 177, 181)

47
 *RRGZLOOZDVGHILQHGDVHDUO\DVDVµWKHEHQHILWDQGDGYDQWDJHRIWKH
good name, reputation, and connection of a business68¶)RUDSODLQWLIIWRVXFFHHGLQ
a tort of Passing Off, he should prove that his goodwill has been damaged. Goodwill
does not have any definition. However, in I.R.C v. Muller69, Goodwill has been
defined as ³WKH DWWUDFWLYH IRUFH ZKLFK EULQJV LQ FXVWRPHUV  ,W LV VRPHWKLQJ ZKLFK
distinguishes an old HVWDEOLVKHG EXVLQHVV IURP WKDW RI D QHZ RQH´ Lord
Macnaghten in the said case observed³«DWKLQJYHU\HDV\WRGHVFULEHYHU\GLIILFXOW
to define. It is the benefit and advantage of the good name, reputation and
connection of a business. It is the attractive force which brings in customers. It is the
one thing which distinguishes an old-established business from a new business at its
first start. The goodwill of a business must emanate from a particular centre or
source. However widely extended or diffused its influence may be, goodwill is worth
nothing unless it has power of attraction sufficient to bring customers home to the
VRXUFHIURPZKLFKLWHPDQDWHV´

Though Goodwill and Reputation overlap with each other, yet there is a
minor disparity between the two. Goodwill has nexus with the territory as it is not
necessary that the plaintiff should have business within the jurisdiction. It is enough
if the customers have knowledge of the business of the plaintiff. Even if there is no
place of business in a country but the goods bearing a trade mark which had been
imported and sold in that country, injunction can be granted based on the use of the
mark70. Goodwill is an incorporeal property, an asset and therefore a species of
property that the law protects, while Reputation is associated with clients or
customers linking to the business of the plaintiff, such as the name of the business,
the mark, design, colour of the goods, distinctive character of the goods, etc.,71
Reputation manifests itself in various forms, most common being the trade name or
trade mark of goods or services indicating a particular trade source. It may also

68
Allison Coleman, Intellectual Property Law 171 (1994)
69
(1901) AC 217; Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by
All India Reporter Pvt Ltd, Nagpur, 2004, pg 684
70
Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 694
71
Ibid, Ass on 03.03.2012

48
arise on account of association with the packaging, get-up and advertising style72.
Thus, while Goodwill is restricted to a particular jurisdiction, Reputation
transgresses boundaries.

It is impossible to have Goodwill without Reputation but the converse is not

true. Reputation is always associated with the person or the product, while
Goodwill pertains to the property. In AnheuserBusch Inc v. Budejovicky
Budvar , the learned Judge differentiated the two, as ³WKDWDVLWVHHPVWRPHLVWR
73

confuse a goodwill, which cannot exist in vaccum, with mere reputation which may
no doubt and frequently does not exist without any supporting local business, but
ZKLFKGRHVQRWE\LWVHOIFRQVWLWXWHDSURSHUW\ZKLFKWKHODZSURWHFWV´

Where a business is carried on in more than one country, there is separate

goodwill in each country notwithstanding that the same legal entity is carrying on
the business in each of the countries. This can be illustrated in Bernadin (Alain) et
Cie v. Pavilion Properties Ltd74, where the plaintiff¶s owned a restaurant in Paris
FDOOHGµ7KH&UD]\+RUVH6DORRQ¶SXEOLFLW\IRUZKLFKZDVGLVWULEXWHGLQWKH8.YLD
tourist boards and hotels. The defendant set up a similar establishment in London,
DGYHUWLVLQJLWXQGHUWKHVORJDQµ&UD]\+RUVH6DORRQFRPHVWR/RQGRQ¶7KH-XGJH
ruled that although the restaurant might have acquired a reputation through travellers
returning from Paris and speaking highly of the restaurant, this was not sufficient to
FRQVWUXHDVµJRRGZLOO¶DVWKHUHZDVQRUHDOFRQQHFWLRQZLWKWKH8.

2.4.1.1 Future Goodwill ± Liable for Passing Off

The action in Passing Off, as the law stands, protects not only the goodwill in
the existing growing business but also the goodwill that the business would be
acquiring in the future. This was the observation of the Chancery Division in

72
Taraporevala V J, Law on International Property, Published by V J Taraporevala, Mumbai, Edition
December 2005; Printed by Inkwell Printers, Mumbai, pg 375
73
[1984] FSR 413; Referred in Banerjee Soumya; Transborder Reputation; Journal of Intellectual
Property Rights, Vol 11, July 2006, pp 274-279;
http://nopr.niscair.res.in/bitstream/123456789/3585/1/JIPR%2011%284%29%20274-279.pdf;
Assessed on 03.03.12
74
[1967] F.S.R. 341

49
Teleworks Ltd v. Telework Group plc75. Here, not only the actual acts of the
defendant was perceived in a Passing Off action, but also threatened acts. Similarly
in Glaxowellcome76, a mandatory injunction was granted requiring the defendant
company to change its name, prior to the plaintiff commencing business. This case
concerned tKHUHJLVWUDWLRQRIDQHZFRPSDQ\*OD[RZHOOFRPH/WG¶IROORZLQJSUHVV
releases stating that if a take-over bid were successful, a company would be renamed
µ*DO[R:HOOFRPH3OF¶7KHLQMXQFWLRQZDVJUDQWHGGHVSLWHWKHIDFWWKDWWKHQHZO\
registered company had not traded.

The first case which defined Passing Off as protection of Goodwill property
right was in Spalding & Bros v A.W. Gamage Ltd (1915) 32 RPC 273]. Soon in
Cadbury-Schweppes Pty. Ltd v. The Pub Squash Co77, the tort was no longer
confined only to product or business, but extended itself to slogans and visual
images. In Taittinger SA v. Allbev Ltd78WKHFODLPDQW¶VZHUHholding a number of
Champagne houses. The defendant made a non-alcoholic drink which it sold under
WKHQDPHµ(OGHUIORZHU&KDPSDJQH¶7KH&RXUWRI$SSHDOKHOGWKDWDOWKRXJKLWZDV
XQOLNHO\WKDWWKHGHIHQGDQW¶VSURGXFWZRXOGUHGXFHWKHFODLPDQW¶VVDOHVLQDQ\ZD\
WKLVZDVDFWLRQDEOHLQ3DVVLQJ2IIVLQFHWKHHIIHFWRIWKHGHIHQGDQW¶VSURGXFWZDVWR
erode the exclusiveness and distLQFWLYHQHVV RI WKH QDPH µ&KDPSDJQH¶ ,Q Bob
Marley case79&ODUNH-VWDWHGµDWOHDVWWRWKHSRLQWZKHUHLWLVFRQVLGHUHGHQRXJK
WKDW WKH PLVUHSUHVHQWDWLRQ LV FDOFXODWHG WR JLYH RQH WUDGHU WKH EHQHILW RI DQRWKHU¶V
JRRGZLOO7KHGHILQLWLRQRIµWUDGHU¶LQ3Dssing Off got expanded to include anyone
ZKR HDUQV LQFRPH E\ VHOOLQJ JRRGV DQG VHUYLFHV EXW WR PHPEHUV RI WKH µOLEHUDO
SURIHVVLRQV¶ OLNH HQWHUWDLQHUV DUWLVWV ZULWHUV DQG DWKOHWHV %XW WKH ZHOO NQRZQ
IRRWEDOOHU 3DXO *DVFRLJQH QLFNQDPHG µ*D]]D¶ DQG WKH JURXS µ6SLFH *LUOV¶ have
been unable to use Passing Off to protect their names as they failed to show a
professional goodwill outside football and music respectively.

75
Kailasam K C and Ramu Vedaraman, Law of Trade Marks and Geographical Indications, Edition:
II, Published by Wadhwa, Nagpur, 2005, pg 356
76
Glaxo Plc v. Gazowellcome Ltd [1996] F.S.R. 388
77
[1981] R.P.C. 429 at 490
78
[1993] F.S.R. 641
79
The Robert Marley Foundation v. Dino Michelle Ltd, (JM 1994 SC 032) Judgment 12 May 1994

50
 In all the above cases, the plaintiff can succeed in a Passing Off claim only if
he is cDSDEOHWRSURYHWKDWKHKDGµ*RRGZLOO¶DVVRFLDWHGZLWKKLVEXVLQHVV*RRGZLOO
is restricted not only to the existing one, but also the one proposed to be acquired in
the future. However, contrary to this, the Celebrity has to show that he or she has a
protectable commercial goodwill or reputation within a particular area of location in
which the relevant misrepresentation is alleged to have taken place and for
individuals who have become well-known to the public through their endeavours in
the field of sports, entertainment or popular culture, it appears that they will have no
problem satisfying the first element of a Passing Off claim.

2.4.2 Misrepresentation

The second classic trinity principle in a Passing Off action, is a

representation that the goods are of a particular type, from a particular area or belong
to a particular class which is not otherwise and such representation deceives /
intends to deceive the customer. The law of Passing Off prevents one person from
misrepresenting his or her goods or services as being the goods and services of the
plaintiff, and also prevents one person from holding out his or her goods or services
as having some association or connection with the plaintiff, when this is not true.
Misrepresentation may take the form of an express statement or implied one. The
first case of Passing Off which revolved around the misrepresentation by the
defendant to be actionable was in Bollinger, J. v. Costa Brava Wine Corp80, where
the court held that the producers of Champagne could enjoin the use of the trade
QDPHµ&KDPSDJQH¶WRDQ\ZLQHVQRWSURGXFHGLQWKH&KDPSDJQHUHJLRQRI)UDQFH

Sallie Spilsbury LQ ³*XLGH WR $GYHUWLVLQJ DQG 6HOI 3URPRWLRQ /DZ´ 
Edition page 31 has listed the following forms of misrepresentation81:

ƒ repUHVHQWLQJWKDWWKHGHIHQGDQW¶VJRRGVRUVHUYLFHVDUHWKRVHRIWKHSODLQWLII
when they are not

80
[1960] Ch. 262, 283-85
81
Mohta, V.A, Trade Marks Passing Off and Franchising, 1st Edition, Published by All India
Reporter Pvt Ltd, Nagpur, 2004, pg 692

51
 ƒ making of untrue representation about the nature of goods rather than their
origin
ƒ a false representation that the goods or services are approved by or
connected with the plaintiff in some way
ƒ D IDOVH UHSUHVHQWDWLRQ WKDW WKH GHIHQGDQW¶V EXVLQHVV LV FRQQHFWHG ZLWK WKH
SODLQWLII¶VEXVLQHVV

$QDO\VLQJWKHDERYHDQ\IRUPRIµXQWUXH¶VWDWHPHQWWRWKHFXVWRPHUFDQEH
WHUPHG DV µPLVUHSUHVHQWDWLRQ¶ Misrepresentation can occur in several ways, the
most common being, falsity as to the goods or services are those of the plaintiff,
they are of a particular type of quality or business affiliation with the plaintiff.

As stated in +DOVEXU\¶VODZVRI(QJODQG82, a representation will be deemed

to be false, if it is false in fact and substance and the test by which the representation
is to be judged is to see whether the discrepancy between the fact as represented and
the actual fact is such as would be considered material by a reasonable representee.

In this case, tKHWHUPµPLVOHDGLQJ¶PHDQVFDSDEOHRIOHDGLQJLQWR µPDWHULDO¶

error. Misleading is creating a false impression of a competitor's goods or services.
The repercussions for misleading include the consumer relying on incorrect
information, may suffer financial loss, the honest competitor loses clientele base, the
transparency of the market diminishes, adverse consequences on the economy etc., 83
The act of Misleading need not be actual making of false statement or false
impression on the consumer. It is considered sufficient if the indications in question
are likely to have a misleading effect. Even statements that are literally correct can
be deceptive. If, for example, chemical ingredients are generally forbidden in bread,
the courts in most countries would consider an advertising claim that a certain bread
"was without chemical ingredients" to be deceptive, because, though literally true, it

82
Agarwal, V K, Consumer Protection, Law and Practice, 2nd edition, Published by Bharat Law
+RXVH3XEOLVKHU¶V'LVWULEXWRUV3/WG1HZ'HOKLSJ
83
Introduction to Intellectual Property: Theory and Practise; World Intellectual Property
Organisation

52
gives the misleading impression that the advertised fact is something out of the
ordinary.84

2.4.2.1 Mens rea - Irrelevant in Misrepresentation

$VLQWHQWWRGHIUDXGLVLUUHOHYDQWLQ3DVVLQJ2IIDFWLRQVLPLODUO\µPHQVUHD¶
is also irrelevant in misrepresentation. Misrepresentation is sufficient, irrespective of
whether there was an intention to misrepresent. The Supreme Court in Laxmikant
Patel v. Chetanbhai Shah85, observed that the absence of an intention to deceive is
not a defence, though proof of fraudulent intention may materially assist a plaintiff
in establishing probability of deception. The misrepresentation need not be
intentional for a Passing Off action to succeed, as innocence of a misrepresentation
is no defence. The misrepresentation may be in respect of the origin of the goods,
their quality or even the way in which they are made86.

In fact, /RUG -DXQF\ LQ -LI /HPRQ VWDWHG µLW LV QRW HVVHQWLDO«WKDW WKH
defendant should misrepresent his goods as those of the plaintiff. It is sufficient that
he misrepresents his goods in such a way that it is a reasonably foreseeable
FRQVHTXHQFHRIWKHPLVUHSUHVHQWDWLRQWKDWWKHSODLQWLII¶VJRRGZLOOZLOOEHGDPDJHG

Where an intention to deceive is found, it is permissible for the court to infer

that intention has been, or in all probability will be, effectual. Unless the
circumstances suggest otherwise, the court is entitled, if Passing Off is established,
to presume that the plaintiff has suffered damage87. Misrepresentation should be of
such a nature as it is likely to cause an ordinary consumer to confuse one product for
another due to similarity of marks and other surrounding factors leading to or be
likely to lead to confusion on the part of consumers88.

84
Acts of Unfair competition: World Intellectual Property Organisation;
85
AIR 2002 SC 275, 279 para 13
86
Hart Tina, Fazzani Linda and Clark Simon, Intellectual Property law , 4th edition, Published by
Palgrave Macmillan, New York, 2006
87
Taraporevala V J, Law on International Property, Published by V J Taraporevala, Mumbai, Edition
December 2005; Printed by Inkwell Printers, Mumbai, pg 382
88
Trade Marks Passing Off & Geographical Indications of Goods ± Law and Procedure, authored by
D P Mittal, Taxmann Publications, Second Edition ± Sept 2002 Para 6.13

53
 It was laid down in Mirage Studies v. Counterfeat Clothing89 that it is
sufficient to show the link between the goods being sold by the defendant and the
goods of the plaintiff. There is no requirement of affirmative evidence being proved
that the public will rely on the misrepresentation in acquiring the goods.

2.4.2.2 Likelihood of Confusion

There must be a misrepresentation that confuse, deceive or is likely to

confuse or deceive the public. The onus of proving this is on the plaintiff. The
plaintiff must therefore prove the balance of probabilities that a proportion of the
public would be confused or deceived as a result of WKH GHIHQGDQW¶V
misrepresentation.

To explain the concept of likelihood of confusion in a Passing Off action, let

us examine the observation made by +RQ¶EOH%HQFK0LWWHU*.LQParle Products
(P) Ltd v. J. P. & Co90: To analyze whether a particular situation has developed the
requisite "likelihood of confusion," courts have generally looked at the following
eight factors;91

ƒ the similarity in the overall impression created by the two marks (including
the marks' look, phonetic similarities, and underlying meanings);
ƒ the similarities of the goods and services involved (including an examination
of the marketing channels for the goods);
ƒ the strength of the plaintiff's mark;
ƒ any evidence of actual confusion by consumers;
ƒ the intent of the defendant in adopting its mark;
ƒ the physical proximity of the goods in the retail marketplace;
ƒ the degree of care likely to be exercised by the consumer; and
ƒ the likelihood of expansion of the product lines.

89
(1991) FSR 145
90
AIR 1972 SC 1359
91
Trademark Infringement; http://www.bitlaw.com/trademark/infringe.html#factors; Assessed on
12.06.12

54
 ,W LV IDLUO\ ZHOO HVWDEOLVKHG SULQFLSOH WKDW ³>S@URRI RI an intent to confuse the
SXEOLFLV QRW QHFHVVDU\WRDILQGLQJRI DOLNHOLKRRGRIFRQIXVLRQ´EXW ³>L@IDPDUN
was adopted with the intent to confuse the public, that alone may be sufficient to
justify an inference of a likelihood of confusion.

In order for a Passing Off action to succeed, there must be a

misrepresentation on the part of the defendant that is likely to mislead the public,
because it is the misrepresentation which enables the defendant to make use or take
DGYDQWDJH RI WKH FODLPDQW¶V UHSXWDWLon. In misrepresentation, the real complaint as
VWDWHGE\3LQFXV-LVµQRWWKHIDOVLW\RIWKHDGYHUWLVHPHQWEXWWKDWWKHQDPHZDVXVHG
RWKHU WKDQ SXUVXDQW WR DQ µHQGRUVHPHQW DJUHHPHQW¶ involving a fee92. In UK,
&HOHEULW\¶V FODLPDQWV JHQHUDOO\ KDYH D JUHDWer burden to discharge in proving
misrepresentation in respect of merchandising, compared to advertisements. Courts
DUH QHYHUWKHOHVV DGDPDQW WKDW µWKHUH LV VWLOO D QHHG WR GHPRQVWUDWH D
misrepresentation because it is that misrepresentation which enables the defendant to
PDNHXVHRUWDNHDGYDQWDJHRIWKHFODLPDQW¶VUHSXWDWLRQ

In Pacific Dunlop Ltd v. Hogan93, a parodic commercial evoked the

character Mick Dundee, the screen persona of actor Paul Hogan. Although the court
was split on the issue of misrepresentation, all justices were of the view that the
well-known knife scene from the Crocodile Dundee movie evoked by the
advertisement grabbed audiences attention and had exploited the substantial
commercially valuable goodwill of the character created and played by Hogan. The
FRXUWIRXQGµ3DVVLQJ2II¶ZKHQWKHUHZDVDOLNHOLKRRGWKDWDVXEVWDQWLDOQXPEHURI
YLHZHUV RI DQ DGYHUWLVHPHQW IHDWXULQJ D µ&URFRGLOH 'XQGHH¶ W\SH FKDUDFWHU ZHUH
misled that there was an approval of the product by Paul Hogan.

2.4.3 Damage to Goodwill

In the third classic trinity principle, the plaintiff must show damage or a
probability of damage and use of the same trade mark or trade name by the
92
Sue Smith (1988) A.T.P.R. 40-833 at 48, 987 (Full Federal Court of Australia)
93
(1989) 14 I.P.R. 398

55
defendant must be likely to injure the business reputation of the plaintiff94. However,
actual proof of damage is not required. The tort of Passing Off protects the
SODLQWLII¶VULJKWWRWKHJRRGZLOOKHKDVJHQHUDWHGLQKLVEXVLQHVV7KHSODLQWLIIPD\
therefore bring an action in Passing Off to protect this goodwill from damage. To
bring a successful action for Passing Off, the plaintiff must show that the
misrepresentation by the defendant caused damage to his identifiable goodwill, or in
a quia timet action, thaWGDPDJHWRWKHSODLQWLII¶VJRRGZLOOLVUHDVRQDEO\IRUHVHHDEOH
As Millet L.J. stated in Harrods95, µGDPDJH WR UHSXWDWLRQ ZLWKRXW GDPDJH WR
JRRGZLOOLVQRWVXIILFLHQWWRVXSSRUWDQDFWLRQIRU3DVVLQJ2II¶

Buckley LJ in Bulmer (HP) and Showerings Ltd v J Bollinger SA and

Champagne Lanson Pere Et Fils96, ³LWLVZHOOVHWWOHGWKDWWKH plaintiff in a Passing
Off action does not have to prove that he has actually suffered damage by loss of
business or in any other way. A probability of damage is enough, but the actual or
probable damage must be damage to him in his trade or business, that is to say,
GDPDJH WR WKH JRRGZLOO LQ UHVSHFW RI WKDW WUDGH RU EXVLQHVV´Thus, damage to the
Goodwill or reputation may result in losing of clientele base, loss of revenue, loss of
economic, future opportunities, FXVWRPHU¶V EHOLHI WKDW WKH LQIHULRU JRRGV are
connected with that of the plaintiff, etc., $OO WKH DERYH LQMXULHV WR WKH SODLQWLII¶V
goodwill must be reasonably foreseeable and need not have actually occurred. This
LV VLPLODU WR PLVUHSUHVHQWDWLRQ ZKHUH SURRI RI µPHQVUHD¶ LV DOVR LUUHOHYDQW LQ
misrepresentation.

2.5 EXISTING STATUTES ON PASSING OFF

2.5.1 Consumer Protection Act, 1986

Unfair Trade Practice broadly refers to any fraudulent, deceptive or dishonest

trade practice; or business misrepresentation of the goods or services that are being
94
Hart Tina, Fazzani Linda and Clark Simon, Intellectual Property law , 4th edition, Published by
Palgrave Macmillan, New York, 2006
95
Harrods Ltd v. Harrodian School Ltd [1996] R.P.C. 697 at 718
96
R.P.C. (1978) 95 (4): 79-152.

56
sold; which is prohibited by a statute or has been recognised as actionable under law
by a judgment of the court. Acts of unfair trade practice include advertisement that
DFRPSHWLWRU
VGDLU\<RJXUWZDVQRWPDGHZLWKFRZ¶VPLONRUDQ\XQWUXHVWDWHPHQW
that a competitor was about to become bankrupt or choosing a logo that was just
marginally different from that of a competitor or stealing the design of a
competitor's product or use of confusingly similar corporate, business and
professional names to mislead the general public, etc.,

µUnfair trade practice¶ means a trade practice which, for the purpose of
promoting the sale, use or supply of any goods or for the provision of any service,
adopts any unfair method or deceptive practice including any of the following
practices, namely97:--

(1) the practice of making any statement, whether orally or in writing or by

visible representation which,²
ƒ falsely represents that the goods are of a particular standard, quality,
quantity, grade, composition, style or model;
ƒ falsely represents that the services are of a particular standard, quality or
grade;
ƒ falsely represents any re-built, second-hand, renovated, reconditioned or old
goods as new goods;
ƒ makes a false or misleading representation concerning the need for, or the
usefulness of, any goods or services;
ƒ gives false or misleading facts disparaging the goods, services or trade of
another person.

On examining the above definition, µDQ\XQIDLUPHWKRGDGRSWHGLQWKHFRXUVH

RIWUDGH¶ will constitute an Unfair trade practise. Such practices may include causing
confusion among the goods, false or misleading representation to the customers,
disclosure of secret information of the goods, taking a free-ride on of another's
achievements, making misleading or false comparative staWHPHQW RQ RWKHU¶V
97
Sec 36A of the MRTP Act, which is now captured in Sec (2)(l)(r) of the Consumer Protection Act,
1986

57
products etc., It is pertinent to mention that any unfair trade practise act should
QHFHVVDULO\UHVXOWLQµFRQVXPHUFRQIXVLRQ¶RUGHJUDGLQJWKHIDPHDQGUHSXWDWLRQRI
the plaintiff amongst the public.

2.5.2 Paris Convention for the Protection of Industrial Property, 1883

The Paris Convention, though does not deal with Unfair Trade Practice, but
OD\V GRZQ SURYLVLRQ SHUWDLQLQJ WR 8QIDLU &RPSHWLWLRQ ³$Q DFW RI XQIDLU WUDGH
practice is any act contrary to honest practices in industrial or commercial matters
and the following in particular shall be prohibited98:

ƒ all acts of such a nature as to create confusion by any means whatever with
the establishment, the goods, or the industrial or commercial activities, of a
competitor;

ƒ false allegations in the course of trade of such a nature as to discredit the

establishment, the goods, or the industrial or commercial activities, of a
competitor;

ƒ indications or allegations the use of which in the course of trade is liable to

mislead the public as to the nature, the manufacturing process, the
characteristics, the suitability for their purpose, or the quantity, of the goods.

6LPLODUWRWKHGHILQLWLRQRIµ8QIDLUWUDGHSUDFWLVH¶ODLGGRZQLQWKH&RQVXPHU
Protection Act, 1986, the Unfair Competition under the Paris Convention reads
DOPRVWLQVLPLODUOLQHV+HUHDJDLQIDOVHDYHUPHQWVFDXVLQJµFRQVXPHUFRQIXVLRQ¶
or misleading the public is the prime criteria. As Unfair trade practise and Unfair
Competition are interchangeably used in the common parlance, both deal with the
same standards or principles on a cause of action in Passing Off.

98
Article 10bis of the Paris Convention for Protection of Industrial Property deals with Unfair
Competition

58
2.5.3 Unfair Competition Prevention Law, 1994

The primary object of enactment of this law is to ensure fair competition

among entrepreneurs and the full implementation of international agreements related
thereto99. Article 2 defines Unfair Competition, as

ƒ An act of using goods or other indication which is identical with, or similar

WR DQRWKHU SHUVRQ¶V JRRGV RU RWKHU LQGLFDWLRQ DV WR EH ZHOO-known among
consumers, or the act of selling, distributing, displaying for the purpose of
sale or distributing, exporting or importing goods on which such goods or
other indication is used, and thereby causing confusion with another
SHUVRQ¶VJRRGVRUEXVLQHVV

ƒ An act of acquiring a trade secret by improper means such as theft, fraud, or

coercion, gross negligence, unfair business competition or the act of using or
disclosing a trade secret so acquired

ƒ An act of indicating on goods or service, or in an advertisement thereof or in

a document or correspondence used for a transaction, which is likely to
mislead with respect to the place of origin, quality, contents, manufacturing
method, use or quantity of such goods or the quality, contents, use or
quantity of such service, or the act of assigning, delivering, displaying for
the purpose of assignment or delivery, exporting or importing goods with
such an indication or offering a service with such an indication;

ƒ An act of making or circulating a false allegation injurious to the business /

reputation of another person in a competitive relationship;

Here again, use of any well known mark for the purpose of sale or
distribution thereby causing confusion amongst the public, or any misleading
advertisements on quality, contents, etc., or acquiring trade secrets by improper or
99
Unfair Competition Prevention Law; http://www.oecd.org/daf/anti-bribery/anti bribery
convention/2377955.pdf; Assessed on 06.11.2014

59
illegal means, disparaging the reputation of the business by making any sort of false
allegations, and such other acts, constitute Unfair Competition.

2.5.4 Model Competition Law of UNCTAD

Under the UNCTAD Model Competition Law, the following trade practices
are termed Unfair100:

ƒ distribution of false or misleading information capable of harming business

interests of another firm;
ƒ distribution of false or misleading information to consumers;
ƒ false or misleading comparison of goods in the process of advertising;
ƒ IUDXGXOHQWXVHRIDQRWKHU¶VWUDGHPDUNILUPQDPHRUSURGXFWODEHOOLQJRU
packaging; and
ƒ unauthorised receipt, use or dissemination of confidential scientific,
technical, production, business or trade information.

Here again, WKHWHUPµ8QIDLUWUDGHSUDFWLFH¶ERLOVDURXQGIDOVHUHSUHVHQWDWLRQ

to consumer with misleading information on the goods sold, making comparative
advertisements, misuse of trade secrets, affixing marks of another trader on the
goods thereby putting up an impression that the goods belong to the other trader,
etc.,

2.5.5 Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPS)

The TRIPS Agreement requires undisclosed information, trade secrets or

know-how to benefit from protection. The protection must apply to information that
is secret, that has commercial value because it is secret and that has been subject to

100
Study and Analyse the situation in India Regarding Unfair Trade Practices and Limitations of the
law enforcement; Consumer Unity and Trust Society; http://www.cuts-
ccier.org/utp/pdf/utp_project_proposal.pdf; Assessed on 17.02.2015

60
reasonable steps to keep it secret101. The Agreement requires that a person lawfully
in control of such information must have the possibility of preventing it from being
disclosed to, acquired by, or used by others without his or her consent in a manner
FRQWUDU\ WR KRQHVW FRPPHUFLDO SUDFWLFHV ³0DQQHU FRQWUDU\ WR KRQHVW FRPPHUFLDO
SUDFWLFHV´which includes breach of contract, breach of confidence and inducement
to breach, as well as the acquisition of undisclosed information by third parties who
knew, or were grossly negligent in failing to know, that such practices were
involved in the acquisition102. The Agreement also contains provisions on
undisclosed test data and other data against unfair commercial use. In addition,
members must protect such data against disclosure, except where necessary to
protect the public, or unless steps are taken to ensure that the data are protected
against unfair commercial use.

In all the above international covenants on Unfair trade practice or Unfair

FRPSHWLWLRQµIDOVHUHSUHVHQWDWLRQ¶LVWKHFUX[6XFKUHSUHVHQWDWLRQVKRXOGUHVXOWLQ
consumer confusion and also cause damage to the goodwill or reputation of the
SODLQWLII+HQFH3DVVLQJ2IIDOVRIDOOVXQGHUWKLVFDWHJRU\RIµ8QIDLUWUDGHSUDFWLFH¶

2.6 PASSING OFF - $&$6(2)µ5($3,1*:,7+28762:,1*¶

Having discussed in detail on the evolution of trademarks and Passing Off

and the Unfair trade practise in Passing Off, it could be concluded that Passing Off
is a case where the offender without putting in any effort uses the trademark of the
owner and reaps all the benefits, thereby depriving the original owner to reap his
fruits. ,QWKHVLPLODUPDQQHUD&HOHEULW\¶VQDPHLPDJHRUOLNHQHVVLVEHLQJPLVXVHG
in promotion of goods or services by bringing an association of the said Celebrity in
the product sold, without obtaining consent of the Celebrity. Undue advantage is
earned by the offender effortlessly, but by causing wrongful loss to the name and

101
Article 39.2 TRIPS
102
TRIPS: A more detailed overview; http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm;
Assessed on 23.08.13

61
fame of the Celebrity. The consumers are also confused on the misrepresentation of
the goods purchased by them.

Moreover, opening up of the Indian economy has led to a plethora of brands

in the markets with each one out to capture a portion of the market103.
Consequential to the increase in the brands, has resulted in roping of more
Celebrities as a forefront to the promotion of the products, which will be discussed
in the next Chapter elaborately. Passing Off has not become an effortless tool, be it
for real or reel characters, with the ultimate loss to the owners of the character.

103
Barooah, Swaraj Paul; Bhattacharya, Shivaji -"Comparative Advertisements: Balancing Consumer
Interest vis-a-vis IPR Infringement" [2009] INJlIPLaw 7; (2009) 2 Indian Journal of Intellectual
Property Law 116
http://www.liiofindia.org/in/journals/INJlIPLaw/2009/7.html;

62