Passing Off

The High Court of Justice – Chancery Division, England, in Benchairs Ltd. Vs. Chair Centre Ltd.[1974 R.P.C. (14) 429 ], has given the essence of passing off and the same reads as under:

“The essence of passing off is, it is said by Mr. Watson, and I agree, the false representation by the defendant that his goods are those of the plaintiff, as has been laid down by the authorities for well over a century in numerous cases. This is, for example, noted by Harman, L.J. in Hoffmann­La Roche Vs. D.D.S.A. (1972) R.P.C. 1 at 18, where he quotes the words of Lord Halsbury in Powell Vs. Birmingham Vingar Brewery Co. Ltd. (1897) A. C. 710, who in his turn is quoting the words of Turner, L. J. in Burgess Vs. Burgess (1853) 3 De G. M. &G. 896. If there is no such false representation there can be no passing off, and the mere copying of the shape of the plaintiffs’ article is not in itself such a representation. Anyone is entitled, suject to some monopoly or stautory right preventing him, to copy and sell any article on the market, and false representation and passing off only arise when a defendant does something further which suggests that the article which he is selling is that of plaintiff. This he may do by a direct representation to that effect such as by the use of the plaintiffs’ name or mark, or by an indirect representation such as by imitation to get­up by enclosing the article in a distinctive package which is similar to that used by the plaintiff.”

In The National Sewing Thread Co. Ltd. Vs. Messers. James Chadwick and Bros Ltd.[AIR (35) 1948 Madras 481 ],the law has been laid down to say that plaintiff who alleges passing off must first establish that the public has grown accustomed to associate the particular name and label with him as the manufacturer or dealer in the article; there must be such an association between the number or the name or the label and plaintiff as to indicate an understanding of the public that the goods bearing that number, name or label came from plaintiff. It is whether a person exercising ordinary caution is likely to be deceived and not whether some ignorant and indiscriminating person might not be deceived. The resemblance must be such as to induce an average man exercising ordinary caution to suppose that in buying defendant’s goods he is buying what has been manufactured by plaintiff. The test in all these cases is whether the general impression left in the mind of a customer who had previously bought plaintiff’s goods is such that he is likely to accept the defendant’s goods when they are offered to him in the belief that they are the plaintiff’s.

In Laxmikant V. Patel Vs. Chetanbhai Shah & Anr [ AIR 2002 SUPREME COURT 275] the Apex Court has very pithily explained what is required to be considered in an action for passing off. An action for passing­ off will lie wherever the defendant company’s name, or its intended name, is calculated to deceive, and so as to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The Apex Court has also held that where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. The gist of passing off action or gist of conception of passing off is that goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In passing off action, plaintiff must prove a prima facie case, availability of balance of convenience in its favour and it suffering an irreparable injury in the absence of grant of injunction. Passing off cases are often cases of deliberate and intentional misrepresentation, but it is well­settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception.

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