Passing Off a Trade Mark and its Effect

In layman’s terms, passing off takes place when a trader/businessperson/or another person makes a false representation to their client, leading them to believe that the goods or services they are providing are the property of someone else. The law of passing off is established under Section 134 (1) (c) of the Trademark Act, 1999. Section 27 of the Trademark Act, 1999 provides a common law remedy. This common-law remedy governs unregistered Trademark rights. A Trademark which is not registered under a Trademark or patent office is an unregister Trademark.

What is a Trademark?

A widespread misunderstanding is that owning a Trademark entitles you to legal ownership of a specific word or phrase and the ability to restrict others from using it. 

Let’s assume you utilize a logo as a Trademark to identify and distinguish your small woodworking business’s goods or services from those of others in the field. This does not preclude others from using a similar brand for goods or services unrelated to woodworking. Another widespread misunderstanding is that selecting a Trademark that just describes your products or services is sufficient. Trademarks that are creative and original are more successful and easier to protect. Further, it ensures that your brand is legally good and assists you in avoiding counterfeiting and fraud.

The Advantages of Registering a Trademark

The most significant advantage of having a registered Trademark is the ability to protect one’s brand and business by incrementing to the compassion of one’s business. Furthermore, a strong brand can operate as a direct link between the customer and the product by ensuring that they are trustworthy and linked with the company for a long time.

There are other advantages, including as

• A Trademark Registration establishes the legitimacy of the source of the product or service.

• A Registered Trademark ensures that the goods and services you receive are of high quality.

• A Registered Trademark aids in the promotion of both goods and services.

Legal Window provides efficient services in relation with Trademark Registration, Trademark Renewal, Trademark Opposition Reply, and Trademark Opposition. Our Experts will guide you through the entire process and do’s and don’ts while registering the Trademark.  

A Step-by-Step Guide to registering a Trademark

The process of registering a Trademark is straightforward, however it recommend that you hire/enlist the help of an experienced Trademark lawyer to make the process easier and more reliable.

• Step1: The first step is to look for a Trademark: When selecting a Trademark, the applicant must exercise caution. Because there are so many various sorts of Trademarks accessible, it’s critical to conduct a public search on the Trade Marks Registry’s Trademark database to confirm that the Trademark is original and that no other Trademarks are similar or identical to his or hers.

• Step2: Submitting a Trademark application: The Trademark registration application files in a single-class or multi-class format, depending on the goods and services that the company provides.Form TM- A is the Trademark registration Application Form; we can file this form online through the official IP India website or in person at the Trade Marks Office, depending on the Trademark’s jurisdiction.The application for Trademark registration must be accompanied by a number of documents that detail the Trademark for which registration is being sought. Furthermore, if the application claims prior use of the Trademark, a user affidavit must be produced, stating the usage and providing evidence of prior use.

• Step3: The government authority examines the Trademark application: Following the filing of the Trademark application, the Examiner is required to submit an obligatory examination report following an exhaustive investigation of the Trademark application in accordance with the Trade Marks Act, 2016.Within 30 days of obtaining the examination report, prepare a reply to outlining the reasons and evidence against any objections.

• Step4: After-examination: If the Examiner (Trademark Authority) is not completely satisfied with the reply filed, or if the objections are not addressed, the Examiner (Trademark Authority) may schedule a hearing. After the hearing, the Examiner may accept the mark and then transmit the application to the journal for publication, or reject the application if an objection remains.

• Step5: Publicity for the Trademark: The Trademark is marketed and published in the Trade Marks Journal for a period of four months.
  The purpose of the publication and publicity is to encourage public to file an opposition to the mark’s registration.
  We can find The Trade Marks Journal on the internet.

The Definition of Passing-Off

“If a person sells his goods as another’s goods,” the Trademark owner has the right to sue. Passing off is a legal strategy for preserving or protecting the goodwill associated with an unregistered Trademark. When a Trademark is register by the owner and infringement occurs, an action for infringement is filed; however, if the Trademark is not registered by the owner and infringement occurs, a case of passing off is filed.

The idea of passing off is establish in the case of Perry v Truefitt’. It states that “no one has the right to portray his commodities as the wares of another” (1842). The legislation on passing off has evolved throughout time. It limits to portraying one person’s wares as those of another. It was later include trade and services. Later, this includes both business and non-business activities. It now covers a wide range of unfair commerce and unfair competition situations. One person’s actions impair the goodwill associated with the actions of another person or group of people.

Passing-Off Trademark

A Trademark, according to the Trademark Act of 1999, is a qualified mark for representing a brand. This also aids in distinguishing one person’s products or services from those of others. It may keep the product’s shape, packaging, and color combination.

It involves making a misleading representation that leads someone to believe the products or services are those of someone else. 

In layman’s terms, passing off occurs whenever a trader makes a false representation to their customer or consumer, leading them to believe that the goods or services they are providing are the property of someone else.  It also relates to unfair business and unfair competition in today’s world. One individual’s actions undermine the goodwill of another person or group of people. 

Different Types of Passing Off

Passing off have two categories:

• Passing-Off for a Longer Period of Time : When a product or service misrepresent as having a certain quality, it disrupts the harmony or goodwill of another person or business.

• Passing-Off in the Reverse: A trader markets, sells, or produces another people or company’s goods or services.

Defense for Passing Off

The following are the defenses for passing off:

• Carefully use your name: The defendant has the right to use his name, Trademark, or emblem, despite the possibility of confusion. If any uncertainty arises and comes to the defendant’s attention, it is the defendant’s responsibility to take reasonable measures to qualify the representation in order to avoid customer confusion.
• The plaintiff’s goods or company are not unique to the name.
• The mark is completely devoid of goodwill.
• The plaintiff has provided his or her permission for the mark to use. 
• A different case of impersonation.

Conclusion

The Trademark must be safe both from a business standpoint and for the protection of customers from fraud and deception. Unregistered goods and services are subject to the passing-off action. In comparison to Trademark infringement, the scope of passing off is far broader. Even if the method and remedies for a passing off claim are the same for registered and unregistered marks, the burden of proof is higher for unregistered marks because establishing goodwill and reputation is more difficult.