With the growing scope for globalization of goods and services the need to protect those goods and services along with the entities has been more acute than ever. Hereas, Intellectual Property Law marks the territory of goods and services under the name of trademark to protect it from any trespass. Trademark traces the source of the product rather than the product itself to guard it from any harm. According to section 2(8) of The Trademarks Act 2009, a trademark can be any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. It is a sign that marks the distinction among the goods or services of one enterprise from those of other enterprises. It can be identified as a lawfully protected abstract, word, number, phrase, design, or any combination thereof related to an organization or a selected product that differentiates it from the other entities within the market. Though the periphery of trademark is a well guarded territory, the goods and services sometimes get passed off under deception of others. Passing off refers to the act of passing off someone else's goods or services as the goods or services of others.

Under section 96(d) of The Trademark Act 2009, suit for infringement can be brought against for passing off arising out of the use by the defendant of any trademark which is identical with, or, deceptively similar to, the plaintiff's trademark, whether registered or unregistered. The underlying principle behind hailing the context of passing off is that "A man is not to sell his goods under the pretense that they are the goods of another man" (Perry v Truefitt (1842)). Section 24(2) of the Trademark Act, 2009 permits the person wronged to take action against any person for passing off goods or services as the goods or services, as the case may be, of another person in the cases of unregistered trademark. Whereas a suit for infringement is available for only registered trademarks, an action of passing off is available for both registered and unregistered trademarks though the aim sought to be achieved remains the same. Under section 97(1) of the Act, the actions that can be sought against the wrongdoer namely the reliefs available are permanent injunction, interim injunction, temporary injunction, damages or account of profits and delivery of the infringing goods for destruction along with the cost of legal proceedings. The court orders one or more parties to do or to abstain from doing certain acts conforming the balance of the events ensued, which are referred to as injunction. Temporary injunction is issued before the start of a trial and they expire at a specified time. It helps to maintain the status quo until the disposal of the case or further order. Permanent injunction mostly gets issued at the end of a trial along with the court's final judgment. The consequences of permanent injunction lasts perpetually or as long as the relevant circumstances are obtained.

In the matter of passing off the plaintiff has to prove deceptive similarity among the goods and services of the parties, the confusion mark among the plaintiff's and the defendant's goods and services that are likely to cause confusion among the goods and services which will entail injury or likelihood of causing injury to plaintiff's goodwill. The House of Lords inReckitt & Colman Products Ltd. v. Borden Inc. and Others [1990] 1 All E.R. pointed out Reputation, Misrepresentation and Damage to goodwill the 'Classic Trinity' in an action for passing off. As they are the prerequisites in proving a passing off. The views were consolidated in the case of Shab Quat Haider vs M Al-Amin 1987 BLD (AD) where the findings were, "Meaning of foundation of passing off action is deception or possibility of deception. In passing off action it is never the plaintiff's case that he has himself been deceived by the action of the defendant. His case is that other people, the public, have been deceived by representing the name or goods of the defendant as that of the plaintiff. If there is a similarity between the two names which is likely to create confusion in the minds of the public that while they are doing business with the one they are in fact doing business with the other then this comes within the ambit of passing off."

When it comes to the businesses, the bigger the market the heavier the burden upon the businesses to maintain its monopoly. However, other businesses infiltrate under pretense. That's why injunctions are more likely to be sought than damages or monetary relief to rip the growing obstacles in the bud and permanent injunction is comparatively more popular in this case. In the case of Dominous Pizza and others Vs. Domino's Pizza Inc.(61 DLR (2009) 780) the plaintiff's trademark 'Domino's Pizza' had a reputation and goodwill in Bangladesh. The defendant started producing pizza and pizza related products by using plaintiff's trademark 'Dominous Pizza' and thereby made huge profits and caused irreparable loss to the plaintiff. Decree for permanent injunction was prayed by the plaintiff. In the petition the court directed the fellow District judge to dispose of the case immediately following the fair prayers. Permanent injunction allows to restrain the defendants whether themselves or their fellow people from using, preparing, storing, marketing, selling or offering for sale, passing off or attempting to pass off any goods bearing or under the trademark of the plaintiff's or any other trademark confusingly similar or identical to the trademark of the plaintiff.

A more subtle use of deception can be seen in the growing market of life saving drugs where permanent injunction was sought. In the case of Universal Pharmaceutical Ltd. and another Vs. Social Marketing Company and others 50 DLR (1998) Social Marketing Company started marketing life drug under the name and trademark 'Orsaline' in 1983. It was alleged that Universal Pharmaceutical Ltd copied and imitated the trademark 'Orsaline' in similar get up, packet, color, size etc. to make financial gain from the lifesaving drug 'Oralsaline'. Social Marketing Company owning the product 'Orsaline' demanded for a permanent injunction restraining the defendant from marketing and selling their product using the trademark 'Oralsaline' and withdrawal of all products of them from the market along with a decree for compensation. The court found that phonetically and visually the marks 'Orsaline' and 'Oralsaline' invited confusion and deception among customers and opined that Universal Pharmaceutical Ltd. can not be allowed to run the business marketing and selling its product 'Oralsaline'.

It can be said that the foundation of a passing of action is always deception or possibility of deception, but is not an action of deceit. The purpose of any action sought against passing off is to curb the deception and to reduce the loss suffered or likely to be suffered by the person wronged. Injunction herein saves both the trademark owner and the consumer by drawing the restraining line around the periphery of the trademark owner's business.

About the Author
Israt Jalil Mim is an Intern of the Research Wing at A.S & Associates.

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