Let me begin this article by way of giving an illustration.
Mr. A is a plaintiff who is a registered proprietor of a trademark X and Mr. B is a defendant who is also a registered proprietor of a trademark X1. Both Mr. A and Mr. B are engaged in the identical business under the above mentioned trademark X and X1 respectively.
Mr. A has filed a suit for passing off action against Mr. B seeking relief to restrain the defendant i.e. Mr. B from using the registered trademark i.e. X1.
Mr. A is a prior user of the trademark X. Mr. A being plaintiff has fulfilled all the criterias of passing off action.
Under such circumstances whether Mr. A is entitled for injunction against Mr. B who is a registered proprietor of the trademark X1 in a case of passing off action.
When the case is for passing off action and not for infringement action, under such circumstances whether section 28(3) is applicable? Whether registration of the defendant’s trademark has relevancy in a case of passing off action? Whether the defence of registration of the trademark X1 taken by the defendant is sustainable or maintainable?
Answering the above mentioned question in respect of passing off action first of all it is required to be considered what is passing off action. Passing off action is a common law remedy. It is not a statutory remedy and the ingredients of passing off action are required to be considered. They are (1) Goodwill and reputation established by the plaintiff under The Trademark Acts, (2) Misrepresentation made by the defendant under the trademark X1 in the course of trade, (3) occurrence of damage in the part of plaintiff, (4) prior use of the trademark by the trademark by the plaintiff.
If above mentioned criterias or ingredients are satisfied by the plaintiff in the case of passing off action the plaintiff is entitled for the relief of injunction against the defendant. Now the question as mentioned hereinabove whether registration of a trademark of the defendant is a relevant factor to adjudicate the case of passing off action.
Answering the same question I’d like to rely upon the judgement of Hon’ble Delhi HC(DB) in the case of
- Century Traders vs Roshan Lal Duggar Co. reported in AIR 1978, Delhi 250(15).
- In para no. 9 of the said judgement was held by Hon’ble DB, “In a passing off action registration of the trade mark is immaterial.” “………….it is clear that registration of the mark in the trade mark registry would be irrelevant in an action for passing off. Furthermore, it will be clear that in deciding whether a particular mark is common to the trade use of that mark would be extremely relevant. Mere registration would not be enough.”
- In para no. 11 of the said judgement the case of Consolidated Foods Corporation v. Brandon and Co., Private Ltd. was cited wherein it was held that, “Registration itself does not create a trade mark. The trademark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.”
- In para no. 14 of the said judgement. “Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish use of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.”
- S. Syed Mohideed vs P. Sulochana Bai
- In this case Hon’ble SC in para no. 23 held that “the registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action.”
- Further in para no. 23 of the said judgement Hon’ble SC held “that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act.”
- Intex Technologies (India) Ltd & others vs M/S Az Tech (India) & Another, Delhi HC
In para no. 18 it was held that, “It is also evident that insofar as a registered trade mark is concerned, the property exists in the mark, but in the case of passing off, the property is not in the mark but in the goodwill.”
- Geoscope Exim Pvt. Ltd. vs SNJ Distillers Pvt. Ltd., Madras HC dated 08/06/2022
In this case both the plaintiff and the defendant are the registered proprietor and they are engaged in the identical business. The plaintiff has filed the suit for passing off action seeking relief to restrain the defendant from using identical and/or deceptively similar trademark HOBBS to that of plaintiff’s trademark HOBSONS. Hon’ble Madras HC in para no. 10 of the order held that “there is some similarity between the two registered word marks HOBSONS and HOBBS but such similarity should be balanced against the fact that the wordmark HOBBS is registered. Even in a passing off action, in my view, this is a relevant though not controlling criterion and should be reckoned along with other aspects.” Hence, injunction is not granted to the plaintiff.
- Ranjit hosiery mills vs MANOHAR C MURJANI TRADING AS V M HOSIERY(AO no. 101/2022 Gujarat HC(DB))
The plaintiff has filed the suit for passing off action before Commercial Court Ahmedabad against the defendant. The plaintiff’s trademark is Ranjit Rocky and the defendant trademark is Rockley. Both are engaged in the hosiery business. Plaintiff is a prior user of the trademark Ranjit Rocky then that of the defendants trademark Rockley. The defendant is a registered proprietor of the trademark/word Rockley. Hon’ble Commercial Court has not granted injunction hence, plaintiff has preferred appeal from order before Hon’ble Gujarat HC as it is the order of Commercial Court appeal was heard by DB as commercial appellate court. Having heard both the advocates of the respective parties at length, Hon’ble Gujarat HC has restrained the respondent/defendant from using the label containing the word Rockley but not from using the word Rockley as the word Rockley is registered in the favour of the defendant.
Author’s Opinion:
In passing off action registration of the trademark has no relevance, neither can the defendant take the defence of the registration of his trademark as it is settled principle laid down by Hon’ble SC and Hon’ble Delhi HC(DB) in the above mentioned judgements in view of the judgement of Hon’ble SC and Hon’ble Delhi HC(DB) whether the order passed by Madras HC and the order passed by Gujarat HC(DB) respectively are contrary to the settled principle of law. In para no. 10 of the order passed by the Madras HC though it was a case of passing off action registration of the defendant’s trademark has been considered a relevant factor for not granting an injunction to the plaintiff. With profound respect to the Hon’ble Madras HC whether this view taken by it can’t be contrary to the principle laid down by the apex court and Hon’ble Delhi HC(DB) that in passing off action registration has no relevance and registration is not a defence? Further when the plaintiff before Madras HC is prior user and when the plaintiff and the defendant both are engaged in the similar business and when the Madras HC has observed the similarity between the two trademarks HOBSONS and HOBBS, is it not the case where the injunction ought to be granted at the stage of adjudication of injunction application filed under Order 39 Rule 1 and 2 of CPC?
As far as the order of Gujarat HC(DB) is concerned there is a case of passing off action, plaintiff is a prior user, plaintiff has established ingredients of passing off action, defendant is admittedly a subsequent user, defendant has taken the defence of registration of his trademark Rockley. With immense respect to Hon’ble DB of Gujarat HC, Hon’ble Gujarat HC has considered the registration of the defendant in the case of passing off action, is it true justification in the case of passing off action. As the registration of the trademark doesn’t give any new right to the registered proprietor. The registration gives proprietary right to the trademark but in passing off action the property is not in the mark but in the goodwill. So when the goodwill has been established by the plaintiff, prior use has been established along with all ingredients of passing off action as well as Order 39 Rule 1 and 2, should the Hon’ble DB have considered the registration of the trademark of the defendant in passing off action which is otherwise contrary to the settled principle of law and the said registration has already been challenged by the plaintiff therein?
Considering the above mentioned judgements of various courts, my opinion is that in passing of action registration of the trademark has no relevance and the same is not a valid defence in the eyes of law.
Chirag Bhatt
Advocate
