Infringement of a Trade Mark and Passing Off-Similarities & Differences

 

Trademark is an identification mark of any company or organization. A customer relates any trademark with the quality of products and reputation of the company that is using it. It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these elements that identifies a product, service or firm that has been legally registered as the property of the firm. Trademarks grant the owner the right to prevent competitors from using similar marks in selling or advertising.

The trade mark Act defines the word trade[1] as any type of profession or other business occupation in which a mark may be used in the manner prescribed by the (Trade Marks) Act.

According to the same Act, mark includes a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form

 

Trade marks in Kenya are registered and the substantive law protecting trade mark owners in Kenya is the Trade Mark Act.

Infringement of a trade mark thereof, refers to the use of a registered trade mark by another person other than the proprietor or a registered user of the trade mark; the acts of infringement includes the use of an identical or similar mark so as to deceive or cause confusion in relation to any goods subject to the trade mark as provided under sections 7 and 8 of the trade mark Act. The Act, further, provides that the application of any other trade mark other than the genuine one or addition of any other goods to the goods subject of the trade mark in a manner likely to injure the reputation of the trade mark constitutes an infringement. Counterfeiting, which includes interference of goods in a way that lowers their value and selling them under another’s trade mark also constitutes an infringement of the Trade Marks Act. However, Trademarks which are not registered under the Trade Mark Act are protected by the Penal Code. The Act provides that counterfeiting under such trademarks is a misdemeanor attracting the general fine or imprisonment provided for misdemeanors. Nonetheless, the Act provides that any person found guilty of counterfeiting a trade mark may be ordered to forfeit the goods or materials used in the counterfeiting.

 

On the other hand passing off as elaborated in the case of Capital Estate and General Agencies (Pty) Limited v Holiday Inns Inc[2], it was held that passing off is a wrong that consists a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to a passing-off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another.

A similarly decision was held in the case of Erven Warnick v Townend[3], where Lord Dipplock identified five features that must be present in order to establish a valid cause of action for passing off, thus:

a)      A misrepresentation

b)      Made by a trader in the course of trade

c)      To  prospective customers of his or ultimate consumers of goods or services supplied by him

d)      Which is calculated to injure the business or goodwill of the trader (in the sense that this is a reasonably foreseeable consequence) and,

e)      Which causes actual damage to a business or goodwill of the trader by whom the action is brought.

Similar principles were laid down by Lord Oliver in Reckitt and Coleman Products Ltd. –v- Borden Inc, where he developed three elements for determining passing off under common law. Thus:

a)      The existence of claimant’s goodwill or reputation,

b)      A misrepresentation as to the goods or services offered by the defendant and

c)      Damage or likely damage to the claimant’s goodwill as a result of the defendant’s misrepresentation.

Basing on the same therefore, it can be inferred that passing off is a wrong, a common law tort which protects the goodwill of a trader from misrepresentation; misleading the public into believing falsely that the brand being projected was the same as a well-known brand as held in N.R. Dongre Vs. Whirlpool Corporation, “A man may not sell his own goods under the pretense that they are the goods of another man.” The doctrine of passing off therefore is a doctrine aimed at protecting traders from unfair competition and enhancing goodwill of traders.

In lieu of the nutshell definition of trademark infringement and passing off, it is worth to note that, the terms do exhibit similarities and differences in their applicability and thus, cannot be used interchangeable to refer to the other.

For instance, it is apparent that, trade mark infringement and passing off  involves a situation where one uses a trademark which is deceptively similar to the trademark of other company. This can be illustrated in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd. Where the plaintiff claimed that the defendants were selling products under the trademark FEXIM that is deceptively similar to the plaintiff’s mark PHEXIN, which is used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff, whereby intending to not only infringe the trademark but also to pass off the goods as that of the plaintiff as the two marks are also phonetically similar. The Court restrained the defendant from using the trademark `FEXIM' or any trademark deceptively similar to the trademark of the plaintiff `PHEXIN', any label/packaging material deceptively similar and containing the same pattern as that of the plaintiff.

Trademark infringement and pasing off not only encompassess the idea of mere usage and misrepresentation of a trademark in decitful way but also includes using a trade mark of another company to advertise ones  product as if they belong to the original company. This was elastrated  in Smithkline Beecham v. V.R. Bumtaria[4] where the plaintiff applied for permanent injunction to restrain the defendant from infringing the trademark, passing off, damages, delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical preparations. Defendants were using the similar name ACIFLO for their product of the same drug in India. Plaintiffs were not doing business in India for the particular product and argued that since their advertisements are been published in medical journals hence they have a transborder reputation and defendants should be stopped to use the similar trademark which creating deception in customers.

Trademark infringement and passig off both attract judicial remedies, especially when dealing with registered trademarks[5] thus:

1.      Cease and Desist

Where a proprietor of a trade mark notices that their trade mark is being infringed, or that the brand they have worked so hard to develop is being infringed, there is the need to rush to put a stop to such wrongs.[6] For instance in Kenya few enterprises carry out trade mark watch[7] on behalf of the trade mark proprietors. It is however expected that the trade mark proprietors also have personnel to monitor the use or abuse of their trademarks.

 

2.      Opposition

This is where a party takes opposition proceedings at the Registry of Trade Marks if he feels aggrieved by the action of another to register a Trade Mark that closely resembles his own[8] in respect of new registrations still in the application stage.

 

3.      Expungement

As opposed to opposition, this is where a party moves the Registry opposing an already registered Mark under genuinely expressed and stated reason as provided in Section 29 of the Trade Marks Act (Chapter 506 of the Laws of Kenya)[9]

 

On the contrary, trademark infringement and passing off exhibit differences, thus:

 

In passing off, a cause of action arises or occurs when there is deceptiveness as to the origin of the goods but in registered trademarks[10], infringement only occurs when certain requirements have been met. The requirements are that the Mark has to be (correctly) registered, and that the defendant’s use of the trademark falls under the definition of infringement. 

 

For infringement it is necessary to establish that the infringing mark is identical or deceptively similar to the registered mark but in the case of a passing off action, the need is to prove that the marks are identical or deceptively similar which is likely to deceive or cause confusion and damage to the business of the company. This was a decision in Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors where the defendant Company was using the trade name HONDA for ‘Pressure Cookers’ which they are manufacturing in India and even when their application for registration of this trademark had been rejected by the registrar they continued using it and again applied for registration and hence plaintiff brought an action against the same. The plaintiff is was a well known company having presence all over the world in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing business in India in association with the Siddharth Shriram Group with the name Honda Siel Cars India Ltd. The plaintiff established that his business or goods has acquired the reputation and his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents is creating deception or confusion in the minds of the public at large and such confusion is causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff. The court restricted the defendants from using the trademark HONDA in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off to the goods of the plaintiff. A similar decision was made in the case of Smithkline Beecham v. V.R. Bumtaria,[11] however, the Courts in Kenya have seemed to set a very high degree in the test and degree of resemblance in proving an action for passing off[12]. For instance, in Cut Tobacco Limited v British American Tobacco[13], the court held that: there can be no proprietary rights in any colour[14] evidence needs to be tendered to show that the get up is likely to deceive the cigarette buying public that they are buying a (rival) packet cigarette.

When a trademark is registered, registration is given only with regard to a particular category of goods and hence protection can be given only to these goods and action of infringement would be taken but in a passing off action, the defendant’s goods need not be the same, they may be related or even different.[15]

Statutory remedy is available for infringement whereas the action for passing off is a common law remedy[16]. Therefore, a passing off action is based on injury to goodwill and not solely on a monopoly vested in the complainant.[17]

 

The Trade Marks Act excuses bona fide infringement whilst good faith is immaterial in passing off actions which seek injunctions, hence for purposes of restraining passing off, registration of the defendant’s mark is immaterial.

 

Conclusion:
By this discussion the following inferences can be drawn:
That a Registered trademark is the property of the holding company and it is directly associated with the name, reputation, goodwill and quality of products of a company.

That a company can not use the trademark of another company.

No one can use even the similar trademark which is creating deception or confusion for the customers.

No one can use the trademark of a company, which is well known and having a transborder reputation, even if it is not registered.

Trade dress is also a part of trade mark and no one can use the specific writing style, definite colour combination and identifiable background for packaging and labeling a product.

 

No remedy for unregistered trade mark incase of infringement and passing off. 

There is high degree in the test and degree of resemblance in proving an action for passing off.

For more of articles like this, kindly contact me on fiverr through this link: https://www.fiverr.com/kibet5763/do-legal-research-writing-and-draft-contracts-pleadings-etc