Passing Off of Trademark

In India
Welcome to this presentation on Passing Off of Trademark in India. Join us as we
explore the essentials of this legal concept and its implications for trademark
owners and users in India.

What is Passing Off [section 27(2)]

Passing is recognized as a common law tort which is used to protect and enforce
unregistered trademark in India.
Trademark Basics
Importance of Trademarks
Trademarks are crucial to protecting the
value and reputation of a brand and its
products or services. They help avoid
confusion and misappropriation by
competitors and guarantee quality to
consumers.
1 Definition of Trademark
A trademark is a distinctive sign or
symbol that identifies and distinguishes
2 the goods or services of one company
from those of others [Section 2(1)(zb)]_.
Overview of Trademark Laws
3
in India
The Indian legal system recognizes and
protects trademarks under the
Trademarks Act, 1999, and the common
law concept of passing off. The Act
provides for the registration, renewal,
and infringement of trademarks.
Elements of Passing Off
Definition of Passing Off
Passing off is a legal action that seeks to
prevent the misrepresentation of one's goods
or services as those of another. It involves
proving deception, confusion or injury to the
goodwill of the plaintiff.
Case Studies
Several high-profile cases have dealt with
passing off in India. Notable examples include
Bata vs Liberty Shoes, (bata form)and N. R. vs
Whirlpool.(whirlpool TM used)
Essential Elements of Passing Off
The plaintiff needs to establish: (1) the goodwill
and reputation attached to their trademark; (2)
misrepresentation by the defendant; and (3)
likelihood of confusion or deception amongst
buyers, leading to injury or damage to the
plaintiff's goodwill.
Remedies for Passing Off (Section 135)
Trademark owners have several civil remedies
available, such as injunctions, damages,
accounts of profits, and delivery up or
destruction of infringing goods. Criminal
remedies include penalties and imprisonment
under the Trademark Act and Indian Penal
Code(Section 107 3y or fine).
Challenges in Proving Passing Off
Burden of Proof
The plaintiff bears the burden of
proving all elements of passing
off, including establishing the
existence and extent of goodwill,
and demonstrating likelihood of
confusion. This can be difficult,
especially for small businesses
with limited reputation and
resources.
Evidence Requirements
Trademark owners need to
provide evidence of reputation,
use, and confusion caused by
the defendant's conduct. This
can include consumer surveys,
advertising and sales figures,
expert testimony, and cross-
examination. Proper
documentation and witnesses
are essential.
Counterarguments
The defendant may argue that
there is no likelihood of
confusion, or that they are using
their own bona fide trademark
that is not similar to the
plaintiff's. Alternatively, they
may challenge the plaintiff's
rights to the trademark based on
lack of distinctiveness, prior use,
or improper registration.
Recent Developments and Case Laws
1 Notable Passing Off Cases in India
Recent years have seen several significant judgments in passing off cases, such as the
Tata vs Amrin case on deceptive similarity, and the Horlicks vs Heinz ruling on
comparative advertising. These have clarified and expanded the scope of passing off
law in India.

2 Impact of Recent Judgments

Many of these rulings have emphasized the importance of consumer perception, the
need for distinctiveness, and the value of goodwill in trademark disputes. They have
also raised awareness of the legal tools available for preventing passing off, such as
interim injunctions and summary judgments.
Best Practices to Protect Trademarks
Trademark Monitoring and Brand Management
Registration Enforcement Techniques
Process Strategies
• Conduct a • Develop and maintain
comprehensive • Track and monitor the a consistent brand
trademark search and use of trademarks identity and message
clearance before online and offline • Create strong customer
• Investigate infringing
• applying
File timelyfor
and relationships and
activities and strategize
registration
accurate applications loyalty through
enforcement efforts
with the appropriate marketing and
• Consider alternative
• authorities
Maintain and renew • engagement
Protect and promote
dispute resolution
registrations as methods, such as the reputation of the
necessary mediation or brand through quality
arbitration control and
innovation.