Analysis of extended “passing off” in UK and India
The article’s aim is to analyze the laws relating to passing off of trademark in the United Kingdom and India. The article also gives a brief overview of the law of passing off and its recent transformation into the tort of unfair trading, as well as updates on UK trademark laws. After reviewing the literature and case law on the topic, I conclude with a few observations and suggestions. I propose, that trade mark registration be made mandatory in order to fill in any gaps.
PASSING OFF – HISTORY, ORIGIN & DEVELOPMENT
Passing off: History and Origin The tort of passing was developed to protect reputation and goodwill attached to trademarks. The history of passing off can be traced back to as early as seventeenth century in United Kingdom and nineteenth century in United States of America and India. As and when trade grew after industrial revolution, trademarks became more and more popular as traders wanted to inform the public about the source of origin and quality. Once products became popular and identified with a particular source there was no dearth of dishonest traders who wanted to reap advantage of the fruits of another’s labour and the tort of passing off was developed to pass out the message that nobody has a right to represent his goods as that of somebody else’s.
INTRODUCTION TO PASSING OFF : WHAT IS EXTENDED PASSING OFF?
Passing off is a common law tort in which the basic premise is that one should not sell one’s own products in the guise of someone else’s goods. To succeed in a lawsuit for passing off, a claimant must prove that the goods or services in question have a reputation or goodwill attached to them, and that the defendant has knowingly or otherwise represented its own goods or services in such a way as to deceive the public into thinking that they are those of the claimant. Furthermore, the complainant must have sustained some kind of loss as a result of the defendant’s conduct.
The tort of passing off is typically centered upon the basic principle that “a man is not to sell his own goods under the pretense that they are the goods of another man”—otherwise commonly known as the classic form of passing off.
The analysis of the doctrine assumes importance because the statutes of United Kingdom, United States of America and India do not define passing off. To succeed in an action of passing off, the plaintiff must prove the three elements i.e. a passing off action it has to be shown that first, that the plaintiff possesses goodwill, second that there is misrepresentation by the defendant that is likely to deceive the public and third that the plaintiff has suffered, and is likely to suffer, damage as a result of misrepresentation as held in the Reckitt & Colman Ltd Case. The landmark J Bollinger Case created extended passing off. This enables a class of traders to prevent rivals from incorrectly applying descriptive terms.
TYPES OF PASSING OFF
There are two kinds of passing off:
1) Extended passing off
2) Reverse passing off
1) Extended passing off : One of the cases where Passing Off is actionable is the extended form of Passing Off. In this form of Passing Off, a misrepresentation on behalf of the defendant in reference to a particular quality of products or services causes harm to the goodwill of the plaintiff.
For example, in the case of Erven Warnink vs. J Townsend & Sons (Hull) Ltd  AC 731, the producers of advocaat sued the makers of a similar though not strictly identical drink, but the other drink was effectively branded as advocaat all over the market.
2) Reverse passing off : In the case of Reverse Passing Off, any person or trader sells, markets, or produces the products or services of some other person or business so as to pass off his/her own business as a branch of the other person or business.
ESSENTIAL ELEMENTS OF PASSING OFF
Characteristic Elements of Passing off. The three elements of passing off- classical formulation are :
(4) Goodwill– It must be shown that the individual or the goods and services have a reputation in the mark that links the public to such particular goods and services. Lord Macnaughton described it more generally in the case of Trego v. Hunt as
“Often it happens that the goodwill is the very sap and life of the business, without which the business would yield very little or no profits. It is the whole advantage whatever it may be, of the reputation and connection of the firm, which may have been made up by years ofhonest work or gained by the bountiful expenditure of money.”
MODERN ELEMENTS OF PASSING OFF
Lord Diplock in the case of Erven Warnink Vs. Townend , gave the modern characteristics of a passing off action. The essential characteristics are-
- Madein the course oftrade by a person.
- The ultimate consumers of goods or services or to prospective customers of his or supplied by him.
- That is calculated as such to injure the goodwill or business of another trader.
- That causes actual damage to the goodwill or business of the trader by whom the action is brought.
The concept of passing off as stated above can be explained as in the case of Honda Motors Co. Ltd V Charanjit Singh & Others
Facts of the case: The plaintiff had been using the trademark “HONDA” with respect to the automobiles and power equipment. The defendants for its pressure cookers had started using the mark “HONDA”. The plaintiff brought an action of suit against the defendants for passing of the business of the plaintiff.
Held: The judgment held that the defendant’s use of the mark “Honda” could not be said an honest adoption. The usage of the mark by the defendant was likely to cause confusion in the minds of the public. The application of the plaintiff was therefore allowed.
PASSING OFF – LAWS (INDIA)
The substantive law of passing off is entirely based on common law, i.e., case law. It is not defined in the Trade Marks Act, 1999. It is referred to in Section 27(2), Section 134(1)(c) and Section 135. Section 27(2) states that the rights of action against any person for passing off goods of another person or the remedies in respect thereof are unaffected by the provisions of the Act. Section 134(1) (c) refers to jurisdiction of courts to try suits for passing off arising out of the use of any trade mark. Section 135 specifies the remedies available in respect of passing off arising from the use of a trade mark.
In the United Kingdom, claims for ‘passing off’ are generally determined in accordance with the criteria for liability identified in three cases decided at the highest level:
(i) the ‘Advocaat’ case (Erven Warnink BV v J. Townend & Sons (Hull) Ltd  AC 731);
(ii) the ‘JIF Lemon’ case (Reckitt & Colman Products Ltd v Borden Inc  RPC 341); and
(iii) the ‘NOW TV’ case (Starbucks (HK) Ltd v British Sky Broadcasting Group Plc  UKSC 31).
A claimant in passing off cannot simply complain of the fact that the defendant is making or conveying a misrepresentation in the course of trade. The court must be satisfied that he has a private right to sue the defendant for an injunction and commensurate financial relief for making or conveying the particular type of misrepresentation that is in issue. In other words, there is a substantive requirement for the claimant to establish locus standi to sue for the protection of his own economic interests.
Claims for ‘extended’ passing off do indeed enable traders to protect their individual economic interests in shared goodwill, as emphasized by the Court of Appeal in England in the:
‘GREEK YOGHURT’ case, Fage UK Ltd v Chobani UK Ltd
Claims for ‘extended’ protection fall within category (ii). Such claims presumably cannot be permitted to operate within the framework of the EUTMR either as an alternative to or incompatibly with the uniform and exhaustive EU regimes for the protection of PDOs /GIs.
However, origin neutral deception of the kind remedied by claims for ‘extended’ protection within category (ii) can presumably be challenged within the framework of the EUTMR by invoking Article 7(1)(g) / Article 52(1)(a) for invalidity in relation to ‘trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service’ and by invoking Article 51(1)(c) for revocation ‘if, in consequence of the use made of it in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services’.
According to the research, the situation in the United Kingdom complies with Article 10bis of the Paris Convention through a variety of legal mechanisms, including consumer protection legislation (particularly transpositions of the Unfair Commercial Practices Directive and the Deceptive and Comparative Advertisement Directive), common law torts of passing off and malicious falsehood, and the ECHR. The law of passing off is an important element in this mix not limited to extended passing off claims: Launching a product with a similar get-up to an established brand is always a risky strategy, even if such get-up is changed in the face of opposition or legal threats. A subsequent re-dress of the packaging could be considered inadequate by UK courts to remedy the harm done to competitors’ products if a product may be said to have established market share by disproportionately riding on the coat-tails of another brand.
Author: Shivani Kinniwadi,
Navrachana University, Final year - BBA LLB Student