Mediaboss Marketing

17 April 2023

A.S & Associates

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With the growing scope for globalization of goods and servicesthe need to protect those goods and services along with theentities has been more acute than ever. Hereas, IntellectualProperty Law marks the territory of goods and services under thename of trademark to protect it from any trespass. Trademark tracesthe source of the product rather than the product itself to guardit from any harm. According to section 2(8) of The Trademarks Act2009, a trademark can be any symbol, word, number, phrase, design,or any combination thereof which is used to identify the source ofgoods or services. It is a sign that marks the distinction amongthe goods or services of one enterprise from those of otherenterprises. It can be identified as a lawfully protected abstract,word, number, phrase, design, or any combination thereof related toan organization or a selected product that differentiates it fromthe other entities within the market. Though the periphery oftrademark is a well guarded territory, the goods and servicessometimes get passed off under deception of others. Passing offrefers to the act of passing off someone else's goods orservices as the goods or services of others.

Under section 96(d) of The Trademark Act 2009, suit forinfringement can be brought against for passing off arising out ofthe use by the defendant of any trademark which is identical with,or, deceptively similar to, the plaintiff's trademark, whetherregistered or unregistered. The underlying principle behind hailingthe context of passing off is that "A man is not to sellhis goods under the pretense that they are the goods of anotherman" (Perry v Truefitt (1842)).Section 24(2) of the Trademark Act, 2009 permits the person wrongedto take action against any person for passing off goods or servicesas the goods or services, as the case may be, of another person inthe cases of unregistered trademark. Whereas a suit forinfringement is available for only registered trademarks, an actionof passing off is available for both registered and unregisteredtrademarks though the aim sought to be achieved remains the same.Under section 97(1) of the Act, the actions that can be soughtagainst the wrongdoer namely the reliefs available are permanentinjunction, interim injunction, temporary injunction, damages oraccount of profits and delivery of the infringing goods fordestruction along with the cost of legal proceedings. The courtorders one or more parties to do or to abstain from doing certainacts conforming the balance of the events ensued, which arereferred to as injunction. Temporary injunction is issued beforethe start of a trial and they expire at a specified time. It helpsto maintain the status quo until the disposal of the case orfurther order. Permanent injunction mostly gets issued at the endof a trial along with the court's final judgment. Theconsequences of permanent injunction lasts perpetually or as longas the relevant circumstances are obtained.

In the matter of passing off the plaintiff has to provedeceptive similarity among the goods and services of the parties,the confusion mark among the plaintiff's and thedefendant's goods and services that are likely to causeconfusion among the goods and services which will entail injury orlikelihood of causing injury to plaintiff's goodwill. The Houseof Lords inReckitt & Colman Products Ltd. v. BordenInc. and Others [1990] 1 All E.R. pointed outReputation, Misrepresentation and Damage to goodwill the'Classic Trinity' in an action for passing off. As they arethe prerequisites in proving a passing off. The views wereconsolidated in the case of Shab Quat Haider vs MAl-Amin 1987 BLD (AD) where the findings were,"Meaning of foundation of passing off action is deception orpossibility of deception. In passing off action it is never theplaintiff's case that he has himself been deceived by theaction of the defendant. His case is that other people, the public,have been deceived by representing the name or goods of thedefendant as that of the plaintiff. If there is a similaritybetween the two names which is likely to create confusion in theminds of the public that while they are doing business with the onethey are in fact doing business with the other then this comeswithin the ambit of passing off."

When it comes to the businesses, the bigger the market theheavier the burden upon the businesses to maintain its monopoly.However, other businesses infiltrate under pretense. That's whyinjunctions are more likely to be sought than damages or monetaryrelief to rip the growing obstacles in the bud and permanentinjunction is comparatively more popular in this case. In the caseof Dominous Pizza and others Vs. Domino's PizzaInc.(61 DLR (2009) 780) the plaintiff's trademark'Domino's Pizza' had a reputation and goodwill inBangladesh. The defendant started producing pizza and pizza relatedproducts by using plaintiff's trademark 'DominousPizza' and thereby made huge profits and caused irreparableloss to the plaintiff. Decree for permanent injunction was prayedby the plaintiff. In the petition the court directed the fellowDistrict judge to dispose of the case immediately following thefair prayers. Permanent injunction allows to restrain thedefendants whether themselves or their fellow people from using,preparing, storing, marketing, selling or offering for sale,passing off or attempting to pass off any goods bearing or underthe trademark of the plaintiff's or any other trademarkconfusingly similar or identical to the trademark of theplaintiff.

A more subtle use of deception can be seen in the growing marketof life saving drugs where permanent injunction was sought. In thecase of Universal Pharmaceutical Ltd. and another Vs.Social Marketing Company and others 50 DLR (1998)Social Marketing Company started marketing life drug under the nameand trademark 'Orsaline' in 1983. It was alleged thatUniversal Pharmaceutical Ltd copied and imitated the trademark'Orsaline' in similar get up, packet, color, size etc. tomake financial gain from the lifesaving drug 'Oralsaline'.Social Marketing Company owning the product 'Orsaline'demanded for a permanent injunction restraining the defendant frommarketing and selling their product using the trademark'Oralsaline' and withdrawal of all products of them fromthe market along with a decree for compensation. The court foundthat phonetically and visually the marks 'Orsaline' and'Oralsaline' invited confusion and deception amongcustomers and opined that Universal Pharmaceutical Ltd. can not beallowed to run the business marketing and selling its product'Oralsaline'.

It can be said that the foundation of a passing of action isalways deception or possibility of deception, but is not an actionof deceit. The purpose of any action sought against passing off isto curb the deception and to reduce the loss suffered or likely tobe suffered by the person wronged. Injunction herein saves both thetrademark owner and the consumer by drawing the restraining linearound the periphery of the trademark owner's business.

About the Author Israt Jalil Mim is an Intern of the Research Wing at A.S &Associates.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.

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