Passing off: Armour for the creators of unregistered products and services. Passing off action in trademark as per section 27 of the Trademarks Act, 1999 provides that no action for infringement will take place for an unregistered trademark. When a trader makes a misrepresentation that harms the plaintiff's goodwill, the passing-off action arises. Put simply, whenever a trader makes a misrepresentation in the course of his or her business, it injures the business of another trader and causes actual damage to the trader's business or goodwill thereby resulting in the passing off action.

Object:
The object of this remedy as passing off is to protect the goodwill and reputation of a business from unfair trade practices.

Obligation Of The Plaintiff To Prove Passing Off:

1. His Goodwill on business
2. Defendant's misrepresentation to the customers
3. Defendant's misrepresentation injured his business or goodwill
4. He suffered damage to business and goodwill.

Case Law: Kaviraj Pandit Durga Dutt Sharma v/s Navaratna Pharmaceutical Laboratories,
Air 1965 Sc 980
Appellant: initiated the preparation of Ayurvedic pharma and vended in the name of 'Navaratnakalpa Pharmacy'.

Respondent: The Manager and proprietor of two trademark namely 'Navaratna' and 'Navaratna Pharmaceutical laboratories'.

Appealant's Claim For Justification:
Appellant: approached to remove the registered trademark
Registrar of Trademark
directed to HC as respondent filed OS in DC
District Court -granted Decree of Injunction against Appellant

Appellant filed OS in HC of Travancore, Cochin- against decree of DC.

HC confirmed with the Decree of DC
Appellant filed two Special Leave Petition in SC against the Decree of HC
SC dismissed the appeal

Appealant's Argument:
(Kaviraj Pandit Durga Dutt Sharma)

• 'Navaratna' is the Sanskrit word that describe the ayurvedic preparation of particular components and incapable of distinctiveness.
• 'Navaratna' not qualified to register under section 6(1)(d) of Trade Marks Act, 1940 as it excludes those words of direct referrence and its quality.
• 'Navaratna Pharmacy' the sanskrit word with the english words also there is no distinctiveness.
• Rely on the Judgment India Electric Works ltd.,(1)(1)(1)49 C.W.N., held on the fact that 'India' being a old mark and geographical word prohibited to register under sec 6(1)(d) of Trade Marks Act,1940 (Sec-6: A trade mark shall not be registered unless registration, it contains or consists of at least one Of the following essential particulars, namely: d) one or more words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or sur-name or the name of a sect, caste or tribe in India )
• There exists dissimilarity of packing, variation of color and other features with that of respondent's products.

Respondent's Argument:

• As per section 6(3)of the Act trade mark in use prior to February 25, 1937 is qualified for registration. (6(3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which- (a) the trade mark is inherently so adapted to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish; Provided that in the case of a trade mark which has been continuously used (either by the applicant for registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its ideutiliy) in relation to the same goods as those in relation to which registration is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registra.tion, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.)
   
• held that the act of Appellant is invasion of statutory right under section 21 of Trademark Act.

Court's Observation:

• Concern about section 6(1) that have a great force in the argument regarding the non-registered trademark. (Sec-6: A trade mark shall not be registered unless registration, it contains or consists of at least one Of the following essential particulars, namely; (a) the name of n company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business ; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods, and not being, according to its ordinary signification, a geographical name or sur-name or the name of a sect, caste or tribe in India ; (e) any other distinctive mark, provided that . a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctiveness.)
   
• Dealing with section 6(3) The SC held that the respondent's usage of mark since 1926 was not disputed.
• Both Trademarks are so close visually, phonetically or otherwise. There exists deceptive similarity. The Court declared as infringement. No further evidence required to establish that the respondent rights are violated by the act of appellant.
• Appellant's claim as difference in packing, get up and writing or marks on the goods or in packet differs from the registered proprietor would be immaterial. In case of passing off the appellant may escape from the liability if he show that added matter is sufficient to distinguish his goods from those of the plaintiff.
• Packing is relevant to the passing off but it is limited application in case of the infringement of registered trademarks and the right and remedy under section 21 for vindication of his exclusive right ot use it.
• Accept there is Deceptive Similarity and not interfere with the orders of the lower courts.
• claim as honest concurrent user under section 10(2) of Trade marks Act,1940 not raised in lower court. Hence, SC not entertain it.
• Hence, Appeal dismissed.

Conclusion:
In this case, the Court given clear difference between infringement and passing off and specified the non-applicability of passing off action against the respondent's registered Trade mark 'Navaratna' and 'Navaratna Pharmaceuticals laboratories'.

Abbreviations:
DC - District Court
HC - High Court
OS - Original Suit
SC - Supreme Court

Written By: B.Monika, Pursuing L.L.M. in G.L.C. TRICHY