Monthly Archives: February 2018

Principles of – Passing-Off

Certain Principles that govern the law of passing-off have been considered by the Hon’ble Apex Court Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 in the context of the right of a registered owner of a particular mark to bring an action for passing-off against another registered owner of an identical or largely similar trade mark. It was further held:
“that the action for passing-off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act.”
Which proposition actually stood approved in an earlier decision of the Court in N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714. The trinity test laid down in Reckitt & Colman Ltd., (1990) 1 WLR 491 was again reiterated by the Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 by holding that to prove and establish an action of passing-off, three ingredients are required to be proved by the plaintiff i.e. his goodwill, misrepresentation and damages. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Indutries Limited, (2018) 2 SCC 1.

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Filed under Intellectual Property Law, Passing-Off, Trade Marks Act