Shielding the Unregistered Marks: A Judicial Analysis

Abstract

With the advent and growth of economy, trade has been consistently on the rise & such rise has been increasing at a steady pace. To recognize a product as one’s own, the traders tend to associate themselves with the name by which their product is commonly known to the masses and it is this name which is regarded as Trade Mark. The Trade Mark Act, 1999 along with the Trade Mark Rules, 2017 gives an array of rights related to Trade Mark. The principal legislation along with the rules aims at providing plenty of rights to the registered trade mark holder. Going by this notion, does this mean that those who do not have a registered Trade Mark are not subjected to any right or they are disentitled from getting any right? Simply put, the answer is no, it isn’t so. Those who do not possess a registered trade mark can also stop the other person from using the identical or similar trade mark by invoking the Doctrine of Passing Off. This doctrine is based on the principle that no one has right to represent one’s goods as the goods of other. To get the remedy of passing off the plaintiff has to proof that he is the owner of the mark, and the same has gained reputation and goodwill in the market and that the misrepresentation which has been done by the defendant due has caused the plaintiff to have suffered irreparable losses and damages. This article delves into the concept of passing off , the main elements that constitutes passing off, the evolution of law of passing and the role of judiciary to uphold the concept of passing off in the Indian Judicial system. Though, the person who has not registered the trade mark gets the rights but these rights are per se limited. In order to prove that an action of passing off holds ground, one has to show that reputation and goodwill are attached to the trademark that is in question. For an action of Passing off there as such is no criteria or definition that is expressly provided in any of the statutes. So it becomes a cumbersome job for the plaintiff to proof the same and even judiciary takes different approaches in different cases with regard to a passing off action.