A trademark in relation to a good conveys to the general public and specifically to the consumers about the origin and quality of that good, thereby acquiring reputation in the course of business and time. Therefore the concept of a trademark is the foundation of one’s business to distinguish from others. A good trademark is often the best salesman of the goods and is a visual symbol of goodwill and stamp of quality.
Every businessman who has spent considerable amount of money making his mark popular will try to secure it from usage by unscrupulous competitors. Protection of trademark is important not only from the business point of view but also for the protection of consumer from fraud and imposition.
Protection of trademark
The law relating to protection of this form of industrial property is intricate and complex. The reputation of a business symbolized by a mark, under common law, can be protected only by an action for Passing off. Registration of a trademark under the Trade Marks Act of 1999 gives statutory rights and slight infringement of it can invite an action for Infringement.
Distinction between the two
An action for an Infringement is based on statutory right i.e. on the exclusive right to the use of a trademark in relation to certain goods conferred by registration on the proprietor of the mark. The exclusive right is infringed if a person uses in relation to the same goods a trademark, which is identical with or is a colourable imitation of registered trademark.
The property protected is the exclusive right to the use of the registered trademark, which is statutorily protected.
An action for Passing off is brought when a trader passes off his goods as and for the goods of another trader. The basis for such an action is the misrepresentation made by the defendant trader in respect to the trade origin or source of his goods. The nature of the plaintiffs’ right, which is invaded, is not clear and therefore what is sought to be protected is the goodwill created by the skill and enterprise of the trader in the course of business. Misrepresentation without infringement of any trademark comes within the ambit of a passing off action.
An infringement action is based on the violation of the proprietary right and deception can be one of the ways whereas in a passing off action deception or likelihood of deception is the only thing to be established.
An infringement action can result in the restraining of defendant from using the registered trademark whereas in a passing off action the defendant is restrained from selling the article without clearly distinguishing from the goods of the plaintiff.
An infringement action does not require the use of the mark. The proprietor could have never used the mark in the course of the business and still bring an action for infringement whereas in a passing off action the plaintiff must establish that the mark by usage has become distinctive of his goods i.e. the goods are identified by the mark.
The distinction can be summarily expressed as that when the defendant has adopted the essential features of the trademark but there are enough indications along with the mark to establish the different trade origin or source, it would be all immaterial to prevent an action for infringement whereas in the case of passing off the defendant may escape liability if he can show that the added matter along with the essential features of the trademark is sufficient to distinguish his goods from the plaintiff.
It is beneficial if combined action for infringement and passing off is brought in one suit as incorporating a plea of infringement, if the mark gets registered can always amend the plaint. But in an action for infringement alone the plaintiff may not be allowed to include a fresh cause of passing off in order to save the action.
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