Sunday, 17 September 2017

Classical Trinity - passing off action


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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