India: Court Reiterates Relief Of Passing Off In Unregistered Marks

Last Updated: 24 April 2007
Article by Manisha Singh

One of the prime motives of the trademark is to reflect the link between the product and the producer or manufacturer. Registration is not an essential factor for the protection of the trademark. But registration entitles the registrant to seek infringement where as if the mark is not registered, the remedy lies in passing off. Trademarks are usually registered for a particular class of goods, and it is a settled principle that two marks can coexist mutually provided the usages of the mark are bonafide. One of the interesting question that arose in Ashish Tea Company & Anr. V. Miraj Products Pvt.Ltd. & Anr. 2007 (34) PTC 246 (Raj.) is that whether a passing off action could lie against the same mark, but in different class.

Facts of the case

The plaintiff /Miraj Products claims to be engaged in the manufacturing and marketing of tobacco and tea and further plans to enter in consumer eatable goods. They claims to have started business in the year 1987 under the trade name ‘Miraj’ and became famous owing to wide publicity. Further claimed that with the objective of obtaining statutory protection to its trademark/ trade name/ goodwill under the title ‘Miraj’ the plaintiff applied for registration of its artistic work under the title ‘Miraj’ and the same was accepted by the Registrar of Trademarks as well as the Registrar of Copyrights. Miraj Products further claim that they had applied in respect of other class of goods as in Schedule IV of the Trade and Merchandise Marks Act, 1958. Miraj products noticed that the Defendants/ Appellants/ Ashish Tea Company was carrying on the business of tea under identically and deceptively similar mark. They also alleged that the malafide intentions of the Ashish Tea can be observed from the fact that the trademark of Miraj products was adopted by scanning exactly the ‘Miraj’ label and using the same with intentions to procure the advantages of the goodwill of the Miraj products. Hence a perpetual injunction is sought for. The matter was contested in the District Court and the Court took into consideration the fact that Miraj Products were doing business since 1987 and that Ashish Tea started business only from the year 2001. The Court also took into account the fact that Ashish Tea were in the business of manufacturing and marketing tea under the brand name ‘Chetak’ and no satisfactory explanation as to the sudden shift was provided. Hence the trial court decreed the suit and aggrieved by that order, Ashish Tea preferred appeal.

Contentions

Ashish Tea contented that the word ‘Mirage’ is neither an invented word nor a coined word. It was further contented that the case cannot be for infringement of trade name, but should be of passing off as both the parties have not registered the trademark in respect of tea. It was further contented that the main course of business of Miraj Products was chewing tobacco, where as Ashish Tea Company concentrated its business to manufacture and sale of tea.

A catena of cases were produced before the court with the aim of substantiation their respective stands.

The court after taking into consideration the precedents held that the pith and substance of the principles laid down is that in trademark infringement and passing off cases what is essential to see is as to whether the consumers are misled. The court took into consideration long usage of the mark, registration of copyright and goodwill etc and held that Miraj Products is entitled to injunction.

Conclusion

Actions for passing off are meant to protect the rights of the trader who is the prior user of the mark. In an action for passing off the plaintiff must prove primarily three factors

  • Reputation and goodwill in India
  • Misrepresentation which injures the business or goodwill
  • Such misrepresentation likely to cause damages to the plaintiff’s business and goodwill.

In addition the Apex Court in Cadilla Health Care Ltd case enumerated the general factors that are to be considered in deciding a passing off case while pointing out that the weightage is to be given to the factors depending upon facts and circumstances of each case.

© Lex Orbis 2007

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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