As an IP lawyer I believe that awareness must be spread in respect of intellectual property laws. This article is a part of knowledge sharing activity with regard to passing off action.
In my career as an IP lawyer, I have observed that a plaintiff is advised to institute a suit for passing off action either separately or a composite suit wherein prayer for passing off action is normally asked by the plaintiff along with other prayers.
Let me clarify that this article is based on the basic requirements to be established by the plaintiff even at interlocutory stage for getting temporary injunction. Unless plaintiff fails to establish the basic necessity, injunction can not be granted in favour of plaintiff for passing off action. Such requirements are called elements of passing off. In other words these elements of passing off are known as 'classical trinity'. It is the main point of this article.
It is pertaining to note that passing off action belongs to common law remedies. It is not statutory remedy, however, section 27(2) of the Trademarks Act, 1999 speaks about passing off action. Now the question is what the common law remedy is. The common law remedy is based on ancient English laws established by courts and customs of England. England is the mother of all laws. The English judges established the principle of classical trinity i.e. ingredients of passing off action. This classical trinity was discussed in a case of Oertil v. Bowman reported in (1957) RPC 388. The English court explained the classical trinity ( three elements) namely (1) goodwill established by plaintiff (2) misrepresentation made by defendant and (3) consequent Damage in suit for passing off action. In another case of Consorzio del Proscuitto vs. Marks & Spencer Plc. (1991) RPC 351 at 368, the English court reiterated the principle of classical trinity. In Reckitt & Coleman Products Ltd v. Borden Inc (No. 3) (1990) 1 WLR 491 at page 499, the classical trinity was discussed in respect of passinf off action , " The law of passing off can be summarized in one short general proposition - no man may pass off his goods as that of another. More specifically , it may be expressed in terms of elements which the plaintiff in such an action has to prove in order to succeed. Three are three in numbers. First , he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of purchasing public by association with the identifying 'get up' ( whether it consists simply of a brand name or a trade description or individual features of labelling or packging) under which his particular goods or services are offered to the public. Such that the get up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Second, misrepresentation was discussed. Misrepresentation made by the defendant to the public ( whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. Third, the plaintiff must demonstrate that he suffers or in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff." The classical trinity is reiterated by English court in case of Property Renaissance Ltd ( T/A Titanic Spa) vs. Stanley Dock Hotel Ltd ( T/A Titanic Hotel Liverpool ) reported in (2017) R.P.C. 12 Para 128 page 485 to discuss the issue of passing off.
Hon'ble Supreme Court of India has emphasized on the principle of classical trinity in the well known case of Laxmikant V. Patel vs. Chetanbhai Shah and other reported in AIR 2002 SC 275 , last two lines of paragraph no.12. The said principle is also reiterated by Hon'ble Bombay High Court in the latest judgement of Torrent Pharmaceuticals Ltd vs. Wockhardt Limited reported in 2017 (70) PTC 215 Paragraph 44. Hon'ble Justice Patel discussed and justified the issue of passing off action in view of the classical trinity.
In my view a plaintiff must consider that whether his case is within the purview of the well established principle of classical trinity or not before filing of a suit for passing off action. Whether he is able to establish the case of passing off even at prima facie stage to restrain the defendant in view of the ingredients of passing off i.e. 'classical trinity' as this trinity is the heart of passing off action.
Chirag Bhatt
Advocate
CBhatt Law Office
Gandhinagar
09824025041
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