"Passing Off" Intellectual Property - by not so intellectuals

Avnish Mittal, Advocate
Punjab & Haryana High Court, Chandigarh
Email Id : avnish@avnishmittal.com

Date : 30/06/2020 - Location : House No. 115, Sector 16-A, Chandigarh
📱 9872000579

"Passing Off" Intellectual Property - by not so intellectuals

It is an age-old belief that "imitation is the sincerest form of flattery". This concept looks good in books and life but when it comes to business, it is popularly called as a theft of intellectual property. Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic work; designs and symbols, patents; trade mark names and images used in business and commerce.

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. The essential function of a trademark is to exclusively identify the source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular entity as the source of goods or services. The use of a trademark in this way is known as trademark use. A trademark needs to be a one-of-its-kind graphical representation depicted on a product. It can be in the form of a picture, word, shape, packaging, labeling, colour/colour combinations or any form of a visual symbol. Owning a trademark allows a proprietor or a trader to utilise it for commercial gains. A good trademark enables the customers to easily identify products manufactured by a particular company.

A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings. It is legally recognized as a type of intellectual property. The symbols ™ (the trademark symbol), ? (which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services and ® (the registered trademark symbol) can be used to indicate trademarks; the latter is only for use by the owner of a trademark that has been registered.

Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is used.

Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. If a consumer tries a can of Coca-Cola and finds the quality lacking, it will be easy for the consumer to avoid all such products of Coca-Cola in the future and instead buy another brand and the basis to identify the product will be the trademark of that product.

A trademark may be eligible for registration, or registerable, if it performs the essential trademark function, and has distinctive character. In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.

An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words "Apple" bear no inherent relationship to their underlying products of computers. Similarly, the Nike "swoosh" bears no inherent relationship to athletic shoes. Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection.

A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. Some exercise of imagination is needed to associate the word with the underlying product. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection.

A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage.

Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term "Computer" is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling "Computer" brand computers (or "Apple" brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time (a process called "genericity"), and thus become unprotected. Thus, a "Generic" terms are used in reference to describe a product or something that is commonly used in everyday life cannot be distinctively and exclusively used as trademark.

In trademark history it is believed that it was the blacksmiths who used to make swords in the Roman Empire were the first users of trademarks. Other notable trademarks throughout the world that can be regarded as one of the oldest is Stella Artois, which claims the use of its mark since 1366. The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold. This was initially done with a purpose to identify the manufacturer and maintain quality standards.

In France the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, it was the Merchandise Marks Act 1862 that made it a criminal offence to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to be a prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act defined a registrable Trade Mark as 'a device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.

In India, the trademark law is governed by the provisions of Trademark Act, 1999 and the same also deals with the remedies for its breach and the claim of passing off. Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.

The law of trademark deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark. It also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

The law of trademark in India before 1940 was based on the common law principles of passing off and equity as followed in England before the enactment of the first Registration Act, 1875. The first statutory law related to trademark in India was the Trade Marks Act, 1940 which had similar provision like the UK Trade Marks Act, 1938. In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which consolidated the provisions related to trademarks contained in other statutes like, the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act. The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and it is the current governing law related to registered trademarks. Though some aspects of the unregistered trade marks have been enacted into the 1999 Act, but they are primarily governed by the common law rules based on the principles evolved out of the judgments of the Courts. Where the law is ambiguous, the principles evolved and interpretation made by the Courts in England have been applied in India taking into consideration the context of the legal procedure, laws and realities of India.

Trademark defined under Section 2(zb) of the Trade Marks Act, 1999 as, "trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours."

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;

A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations.

The two symbols associated with Indian trademarks™ (the trademark symbol) and ® (the registered trademark symbol) represent the status of a mark and accordingly its level of protection. While ™ can be used with any common law usage of a mark, ® may only be used by the owner of a mark who has his trademark registered with the relevant authorities.

Though registration of a trade mark is not a mandate of law, yet it has its own advantages. Registration of a trade mark confers the following rights on the registered proprietor: -

• The exclusive right to use the trade mark in relation to the goods or services in respect of which the mark is registered.

• The right to obtain relief in respect of infringement of the trade mark.

There are two different remedies available to the owner of a trademark for unauthorized use of its trade mark by a third party viz. an action for passing off in the case of an unregistered trademark and an action for infringement in case of a registered trademark. A claim for Passing off and trade mark infringement can be poles apart as both have different parameters.

The word Passing off has not been defined under the Trade Marks Act and is based upon the common law principle of torts. It protects trader's goodwill in relation to their goods and services. A "Goodwill" is the brand reputation which is built-up in relation to specific goods or services and which attracts customers. It can be held by an individual trader or in some cases shared, such as between all the producers of a specific product in a specific area. The principle underlying the tort of passing off is that "A man is not to sell his own goods under the pretence that they are the goods of another man".

Section 27 of the Trade Marks Act, 1999 recognizes this common law right of the trademark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or remedies thereof. The remedy made available under Section 27 of the Act protects the rights of the proprietor of an unregistered trademark to take action against another person for passing off his goods as goods the goods of proprietor.

The few parameters that may be necessary to prove a claim for passing off are :-

• Misrepresentation by a person intending to use the same trade name or mark.

• Such a mark may cause the prospective customers of his or ultimate consumers of goods or services supplied by him to believe that the product is from a company that is already using that trade mark.

• The use of such trade mark or trade name or sale of goods may result in calculated injury to the business or goodwill of another trade

• The use of the same causes actual damage to a business or goodwill of the trade by whom, the claim is brought.

Passing off claims can be difficult to prove because claimants need to demonstrate that at least some of the public are at risk of confusion between the two businesses. Also, it is not always easy to show that a misrepresentation has been made. However, for proving a claim of passing off a presence of these three elements are a must:

• That claimant possesses a goodwill in his goods, name, mark, or other identifying feature, that associates the public with those specific goods (and distinguishes them from others).

• There must be a misrepresentation by the other party which has led others to believe the goods are that of the claimant.

• The misrepresentation has caused damage to claimant's goodwill.

For example, if someone advertises their fast food business as "the Rolls-Royce of chip shops" they may well be infringing Rolls-Royce's trade marks but it is highly unlikely a court would find that they were passing themselves off as connected to Rolls-Royce in a business sense. However, ironically in Daimler Benz Aktiegesellschaft v. Hybo Hindustan AIR 1994 Delhi 239 the dispute was between the famous car maker Mercedes and a company that was into manufacturing of under wears using the brand as benz underwear. The case was instituted by the car company to restrain the defendant company from using the word benz for selling their under wears. It was held by the Delhi high court that

"In the instant case, "Benz" is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute, that by user of the name "Benz" with respect to a product like under-wears.....

....... In my view, it is but right that the defendant should be restrained from using the word "Benz" with reference to any underwear which is manufactured by them, and in my view, injunction should issue, restraining the defendant to cease and desist from carrying on trade in any undergarments in the name of "Benz" and "Three Pointed Human Being in a Ring", forthwith. So, ordered."

It may also be relevant to mention about another famous case Rikhab Chand Jain & Anr v. Audi AG - CS 1966 of 2015 that was filed by a company against the famous Audi cars. It was alleged that the word TT that Audi is using to sell its products including cars is in fact a registered trade mark of the plaintiffs and thus Audi AG be injuncted from using the same. The Delhi High Court while passing an order dated 21st July 2015 injuncted the car company from using the same as an interim protection.

A Claim for Passing off is based upon fair trade and honesty. It protects against unfair competition in its own unique way. It can protect the Deception of the buying public at large and those signs or actions that can influence their purchasing decision. The concept of passing off is based upon the principles of common law and has much wider scope than infringement.

The famous case of Reckitt & Colman Products Ltd v. Borden Inc., [1990] 1 WLR 491, commonly known as the "Jif Lemon" case laid down 3 tests to prove a claim of passing off:

• Reputation

• misrepresentation, and

• goodwill.

These 3 different principles were explained in the Jif Lemon Case:

Reputation: The claimant must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by with the identifying "get-up" [i.e. trade dress] (whether it consists simply of a brand name or a trade description or the individual features of labelling or packaging) 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.

Misrepresentation: The claimant must demonstrate a misrepresentation 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 claimant. Misrepresentation in the law of passing off requires confusion to be caused in the minds of the buying public. It is a special type of confusion and "Mere" confusion is not enough, it has to be coupled with an action making the actual public buy the product in that confusion. When assessing whether a misrepresentation has been made to the buying public, it doesn't matter whether misrepresentation was intentional or not.

Damage: The claimant must also demonstrate that he suffers or, in a quia timet action, 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 claimant.

So, if a competitor deceives a substantial number of potential purchasers into thinking another business's goods or services are theirs, then it's passing off. The burden of proof is with the claimant - the business harmed - to show on the balance of probabilities.

As discussed, the claim of passing off can also be filed for harm to the goodwill. A Goodwill the attractive force which brings in business: the power of attraction that brings customers into the business and buy. Passing off protects against damage to the goodwill when a competitor uses some indication, signal or suggestion that its goods and services are those of the owner of the goodwill.

A business can protect its goodwill using the law of passing off against misrepresentations made by other businesses and its direct competitors which cause damage to its goodwill. It means that the law of passing off is not limited to protecting visible trade marks and logos, as registered trade mark law is but can be used to protect the damage to the goodwill and reputation too. However, there's no passing off unless the defendant somehow misrepresents the origin of goods or services as their own.

Passing off may be of three types: -

Classic: In these cases, the competitor instils a belief in the minds of the buying public - or those that influence buying decisions - that there is a connection between their goods or services and those owned by the owner of the goodwill. However, not every connection will lead to passing off. The misrepresentation must suggest that the defendant is somehow behind the defendant in some way.

Reverse Passing off: In cases of inverse or reverse passing off, the competitor says that the goods or services of the protected business are actually its own, but doesn't sell the protected business's goods or services at all. In passing off language, a competitor sells their own goods by reference to someone else's goodwill. The competitor seeks to get sales by falsely representing that work actually done by the protected business is actually done by the competitor.

Extended Passing Off: In this situation the passing off takes place when a competitor sells a product of the same description, but does not match what the market thinks it is. It doesn't matter whether the buying market actually knows that the competing product or service has same description or not. Here the group of businesses collectively own the goodwill, not just one of them for example Swiss Chocolate: a product made to a particular formula and with particular characteristics. Extended passing off applies as much to generic products which by virtue of their special or distinct characteristics have developed a name and fame in the market.

Thus, a claim for passing off can be filed to protect all kinds of damages that a competitor may cause by using and misrepresenting to the public at large by using the claimants name and business goodwill. It's may also be noted that passing off not only protects and shields the claimant against actual damage but also protects him against a likelihood of damage. So even if actual damage has not actually been caused, the likelihood of it is enough. It's enough to obtain an interim injunction to restrain passing off pending the trial.

It was held in Burberry's v. Cording (1909) 26 R.P.C. 693 that "An injunction can be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property to protect which it is granted is not property in the word or name but property in the trade or goodwill which will be injured by its use."

Passing off enables businesses to enforce their rights associated with its good name or goodwill in the market. It prevents competitors stealing - or over-borrowing - the traits of a product or service which has made it a success. It protects against all activities of a business that may lead the public into believing that they are another business. The greater the degree of goodwill, the more extensive the protection granted by passing off.

However, there may be situations where a trade or business is carried on by using a generic name. The issue that often crops up in such a situation is that whether any claim of passing off or infringement is maintainable in such a situation?

Generic term is a word that is associated with or known as a particular category of goods and services to which it relates. The result is that the term ceases to function as an indicator of origin. A generic word is one used by much of the public to refer to a class or category of product or service. A generic name can not be protected or registered as a trademark or service mark. For example, any single seller can not have trademark rights in "television" or "oven." When a seller is given exclusive rights to call something by its recognized name, it would amount to a practical monopoly on selling that type of product. Even established trademarks can lose their protection if they are used generically. For example, thermos and aspirin. According to Webster's dictionary the word generic means "relating to or characteristic of a whole group or class: not being or having a particular brand name generic drug: having no particularly distinctive quality or application". The Blacks law dictionary defines it as "An item marketed with no brand name, trademark, or other distinguishing feature. Nothing separates it from other similar items except for its market name. Part of a certain general class, or genus, of items"

In confirming this, Section 9 of the Act requires that a trade mark, in order to be registrable, must be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person. A mark can be considered to be capable of distinguishing in this manner either inherently or by reason of prior use. However, a mark that is not (or no longer) capable of distinguishing in this manner cannot serve the basic function of a trade mark, as above, and hence it cannot be registered as a trade mark. Thus, a business name or product that is not associated with any distinct characteristics by virtue of the name or product is commonly called a generic name and such name by virtue of it being so or a family name or general product names are difficult to protect under the ambit of the trademark act.

As discussed above the other remedy under the Trade Marks Act for breach of any registered trade mark is a claim for infringement of trade marks. It may be noted that since trademark infringement is a continuing offence, there is no limitation on the time period for filing the said suit.

The common meaning of the word infringement is a violation of a law or a right. The term Infringement has been defined by Webster's Dictionary as: "the act or an instance of infringing especially: the unauthorized use of copyrighted or patented material or of a trademark, trade name, or trade dress". It is also defined by Nolo's -English Law Dictionary as "1) Violation or breach of a legal right, contract, or statute. 2) Unauthorized use of a patent, copyright, or trademark." In simple words, trademark infringement is the unauthorised usage of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that when an average consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services.

The meaning of Infringement of a registered trademark can be gathered from The Trade Marks Act of 1999, section 29 whereby, a registered trademark is said to be infringed by any person, who not being the registered proprietor of the Mark or being a person authorized by the owner for its use (registered user), uses in the course of trade, a mark which is identical with, or deceptively similar to the mark in relation to goods and services in respect of which the trademark is registered.

According to Section 29 of the Trade Marks Act, 1999, the following conditions amounts to Trademark infringement in India:

• If the unregistered mark is identical to a mark registered for similar goods and services.

• The similarity of an unregistered mark with the infringed mark is likely to create confusion in the minds of consumers.

• The unregistered mark is similar to a registered trademark having a reputation in the market.

• The registered trademark is used on labelling or packaging without authorisation.

• The registered trademark is used in advertising, taking unfair advantage detrimental or against the reputation of trademark.

Though infringement and passing off are often used inter-changeably yet, there are marked differences in taking action for an infringement of Trade Mark and an action for passing off. The Supreme Court while further explaining the concepts and parameters of infringement and passing off in S. Syed Mohideen v. P. Sulochana Bai, 2016(2) SCC 683, has held that passing off right is a broader remedy than that of infringement. This is due to the reason that the passing off doctrine operates on the general common law principle of law.

The distinction between the two was also explained in detail by the Delhi High Court in Cadbury India Limited & Ors. v. M/s Neeraj Food Products, 2007 (12) RCR (Civil) 425. Thus, from the above the following may be classified as some of the major differences in the above two concepts: -

• Trade mark Infringement is a statutory remedy whereas Passing Off is a common law remedy, and being so, it has a wider scope.

• For an action of Trademark Infringement, registration of the trademark is a mandate, whereas for Passing Off registration is not required.

• For Trademark Infringement a suit can be instituted under Section 134 of the Trade Marks Act 1999 where the registered proprietor resides or carries on his business, whereas for Passing Off the remedy has to be sought under Section 20 of the Civil Procedure Code 1908.

• If the major features of the trademark of the plaintiff have been adopted by the defendant, the fact that the packing and other writing or marks on the goods or on the packets in which the defendant offers his goods are somewhat different, would be immaterial for the case of infringement of the trademark and he shall still be liable for such infringement. However, In the case of passing off, the defendant may not be held liable if he can show that the added material is sufficient to distinguish his goods from those of the plaintiff.

• The use by the defendant of the trademark of the plaintiff may be prerequisite in the case of an action for infringement, while it is not an essential feature of an action for passing off.

Thus, what may constitute a breach of intellectual property to constitute an action for passing off or infringement depends on various factors discussed above and also whether the same is an off shoot of using a generic name or a family name which usually happens with the usage of common names or terms to run the business or because of a split of business family coming from a common business lineage .

It was held in Shri Ram Education Trust v. SRF Foundation & Anr., 2016 (2) PLR 3 that:

"The Plaintiffs have not been able to prima facie show that they are entitled to use the family name to the exclusion of the Defendant. Both the brothers having common lineage, prima facie have common rights and cannot exclude the other. It is not disputed that the name SHRI RAM was first used by Late Sir Shri Ram, who established educational institutions such as Shriram College of Commerce, Lady Shriram College for Women, Shriram Institute for Industrial Research etc. The name SHRI RAM was adopted by the family in relation to their respective endeavours.

16. When the name SHRI RAM has admittedly been first adopted by the grandfather of the parties, the plaintiffs cannot appropriate the same to the exclusion of the defendant. The goodwill and reputation in the trademark adopted by the grandfather shall enure to the benefit of all the heirs, unless something to the contrary is shown so as to exclude the other heirs. One member of the family cannot, without something more being shown to the contrary, claim exclusive ownership of the mark. All the heirs of the person who first adopted a mark and put the same to use and earned goodwill and reputation shall, prima facie, have equal rights to adopt and use the same. Something more than mere prior adoption by one of the heirs would have to be shown so as to extinguish the rights of the other heirs."

Similar view was taken by the Bombay high court in Parle Products Private Limited v. Parle Agro Private Limited, 2008 (21) RCR (Civil) 455. It was also held in Lohia Auto Industry v. Lohia Starlinger Ltd., 2010(4) RCR (Civil) 520 by the Allahabad high court that:

"Taking into totality of the matter we are of the view that the dispute is with regard to such logos not anything else i.e. statement on the internet or newspaper. Statement or article either in the website or in the newspaper merely saying LOHIA GROUP can not prima facie satisfy the cause that it has infringed or passed off the logo. Both are distinct and different. Moreover, court has not enquired from the plaintiff/respondent whether the logo is registered under Section 9 of the Trade Marks Act, 1999 with the generic words "LOHIA GROUP" or not. The settled legal position is that one cannot have any monopoly right over the generic word. There is a distinction between generic word and common word. Where the mark is deceptively similar to recognise non-propriety name or generic name, the mark may come within the prohibition of Section 9 of the Act. Though normally the trade mark ought to be taken as a whole, but it is duty of the court to find out whether the respective word/s, even being the generic word formed part and parcel of the logo or not. Even assuming the same is part and parcel of logo yet at the time of passing an order of injunction, the court must be careful to see whether such logo is deceptively similar with the logo of appellant/defendant or not to come to an appropriate finding with regard to infringement of trade mark and passing off. The appellant/defendant has made two categorical statements. Firstly, the words LOHIA GROUP are generic words and secondly, they have not violated the same. The court below has visualised that both the logos are different from each other yet came to a conclusion that if any order of injunction is passed, no one will be prejudiced in carrying on the business on the basis of available logos. We are of the view that such decision is totally perverse in nature. Once the finding of the court below is that if both of them are allowed to do business with the available logos and nobody will be prejudiced, no question had arisen for the court below to pass an order of injunction in spite of such observation. Therefore, under no circumstances, the order impugned can be said to be sustainable."

It may also be noted that unlike all other civil suits, under section 134 of the Trade Marks Act, 1999, a suit for passing off or infringement of a trade mark cannot be filed before any court that is inferior to a district court. Thus, though there are large number of protections available for theft of an intellectual property and all these words passing off and infringement are interchangeably used, yet it would not be wrong to say that with success comes not only rewards and responsibilities but also liabilities of series of imitation and lengthy litigations.

Thus, it would be just apt here to conclude by saying that an "Intellectual property no matter how famous and protected it is, has the shelf life of a banana."

(The author is a practising advocate in the Punjab and Haryana High Court at Chandigarh and the views shared herein are personal only)

© Chawla Publications (P) Ltd.