The third issue is also answered in the affirmative.
As to whether or not the defendant’s (1st and 2nd) are passing off their product as that of the
plaintiff, passing off in cases of trademark infringement means the pretence by one person that his
goods are those of another. In intellectual property law, where a person sells goods or carries on
business under such name, mark, description or otherwise in such a manner as to mislead the
public into believing that the goods or business is that of another person, that other person is said
to be passing off his goods as those of the registered owner of the trade mark. A cause of action
for passing off is therefore a form of intellectual property enforcement against the unauthorized
use of a mark which is considered to be similar to another person’s registered or unregistered
trademark, particularly where the action for trade mark infringement based on a registered trade
mark is unlikely to be successful (due to the differences between the registered mark and the
unregistered mark). It is a common law tort which can be used to enforce unregistered trade mark.
This in my view adequately takes care of learned defence counsel’s argument that the plaintiff
company was only registered in 2005 whereas the Kanta 2 brand was on the market long before
2000. The evidence on record sufficiently links the plaintiff company with the originator of the
brand in India. It matters not in my view that the originator of the brand was a partnership whereas
the plaintiff is a limited liability company. The instant case is for enforcement of a registered trade
mark. Going by authorities, five characteristics which must be present in order to create a valid
cause of action for passing off are:
(i)
a misrepresentation;
(ii)
made by a trader in the course of trade;
(iii)
to prospective customers of his or ultimate consumers of goods or services supplied by
him;
(iv)
which is calculated to injure the business or good will of the trader (in the sense that it is a
reasonably foreseeable consequence);
and
(v)
which causes actual damage to a business or good will of the trader by whom the action is
brought or will probably do so.
See: Reckitt & Coleman Ltd –Vs- Borden Inc. [1990] 1 WLR 491.
In the instant case, the plaintiff has adduced sufficient evidence to show that Kanta 2 is a
concocted replica of Kanta 1. The plaintiff has adduced evidence establishing a good will or
4