The Goodwill of the business is ordinarily represented by a mark, name, get-up or symbol. The goodwill of a trade in his business or his goods of another trader, or his services or in the work which he produces or something of that kind. A man is not to sell his own goods under the pretence that they are the goods of another trader. A misrepresentation achieving such a result is actionable because it constitutes an invasion of property rights vested of the prior user. A misrepresentation made by a trader to his prospective customers calculated to injure, as reasonable consequences, the business or goodwill of another which actually or probably causes damages o the business or goodwill of the other trader is passing off. In a passing off action that the prior users’ goods have acquired a reputation in the market and the misrepresentation has deceived or is likely to suffer damage by such deception. Goodwill, misrepresentation and damages are the three elements of passing off. The gist of the concept of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The essential characteristic which must be present in order to create a valid cause of action for passing off are (1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him,(4) which is calculated to injure the business or goods or goodwill of another trader and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so ….No claim could however succeed , in the absence of all five. Passing off caused the following methods; (a) direct false representation, (b) adoption of a trade mark which is the same or a colorable imitation of the trade mark of a rival trader, (c) adoption of an essential part of the rival trader’s name ,(d) copying the get- up or color scheme of the label used by a trader,(f) imitating the design or shape of the goods; and (g) adopting the word or name by which the rival trader’s goods or business is known in the market. Direct misrepresentation in the simplest form of Passing off.
An action against Passing Off:
Action for passing off can be maintained by an unregistered firm. The plaintiff in a suit for passing off must be the owner of a trademark which has acquired reputation in relation to some goods or the owner of the good will in a trade name, or get-up relating to some goods or business or profession. Passing off is dealt in sections 24(2), 96, 97 of the Trademarks Act-2009. Section 24(2) provides that the rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof are unaffected by the provision of the said Act. Section -96 provides that the District Judge have the jurisdiction to try suits for passing off. Section -97 provides that the remedies which a court may grant in a suit i.e (1) injunction,(2) Damages or on account of profits at the option of the prior user (proprietor), (3) any order for delivery up of the passing off/infringed labels and marks for destruction or eraser. The object of the injunction is to restraint the defendant from passing off his goods as and for the goods of the plaintiff. Interlocutory relief would not be granted in the absence of good ground for supposing that the withholding of an injunction would not be likely to result in damage to the plaintiff or to their reputation or goodwill pending the trial. In action for passing off it is advisable for the plaintiff, at the commencement of the action, to move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. Once the interim injunction is obtained the litigation may come to an end in most cases. This is because the trial of the action may take a long time and in the meantime the defendant may think it wise to adopt a different mark or name for his goods or business. If the plaintiff fails to obtain an interim injunction he may also not be interested in continuing the action unless he has a big stake in the action. In an passing off action there must be (1) the plaintiff has established a goodwill or reputation in connection with a business, profession, service or any other activity, among the general public or among a particular class of people, prior to the first use of the defendant, (2) the defendants’ activities or proposed activities amount to a misrepresentation which is likely to injure the business or goodwill of the plaintiff and cause or likely to cause damage to his business or goodwill.
A registered trademark is infringed by a person by who applies such registered trademark to a material intended to be used for labeling or packaging goods as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee. The infringement will occur when the subsequent user use the alleged trademark is identical with the registered trademark and similar of the goods or services covered by such registered trademark. In order to constitute an infringement must fulfil i.e. (1) the mark used by any person must be either identical with or deceptively similar to the registered trademark,(2) the goods or services in respect of which it is used must be specifically covered by the registration,(3) the use made of the mark must be in the course of trade in areas covered by the registration,(4) the registered trademark has a reputation in Bangladesh,(5) the use of the mark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered trademark,(6) goods or services not similar.
An action against Infringement:
A suit for infringement of trade mark accompanied by passing off action shall lie before the learned District Judge of the trademark which is a registered one. The suit for infringement of trademark coupled with passing off action, shall file before the learned District Judge according to the section-96 of the Trade Marks Act. Since registration of a mark is granted with effect from the date of application; an applicant for registration is qualified to file a suit for infringement provided the trademark is registered before the hearing of the suit. In a suit for infringement court may grant interim as passing off actions under Section -97 of Trade Marks Act.
Punishment under The Penal Code-1860:
The Act provides for civil as well as criminal proceedings against infringement of trademarks. Both actions can proceed simultaneously, and if done so, no prejudice is likely to be caused to any of the parties, inasmuch as both the actions are not mutually exclusive, but clearly co-extensive and quite different in content and consequence. The owner of trademark may file cases under The Bangladesh Penal Code-1860, the related penal sections are:
Section-482 provides that whoever uses any false trade mark or any false property mark shall be punished with imprisonment of either description for a term which may extend to one year, or with fine, or with both.
Section-483 provides that whoever counterfeits any trade mark or property mark used by any other person shall be punished with imprisonment of either description for a term which may extend to two year, or with fine, or with both.
Section-485 provides that whoever makes or has in possession any die, plate or other instrument for the purpose of counterfeiting a trade mark or property mark, or has in his possession a trade mark or any property mark for the purpose of denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not ,or that they belong to a person to whom they do not belong, shall be punished with imprisonment of either description for a term which may extend to three year, or with fine, or with both.
Section -486 provides that whoever sells, or exposes, or has in possession for sale or any purpose of trade or manufacture, any goods or thing with a counterfeit trademark or property mark affixed to or impressed upon the same or to or upon any case, package or other receptacle in which such goods are contained, shall be punished with imprisonment of either description for a term which may extend to one year, or with fine, or with both.
Section -487 provides that whoever makes upon any case, package or other receptacle in containing goods in a manner reasonably calculated to cause any public servant or any other person to believe that such receptacle contains goods which it does not contain or that it does not contain goods which it does contain, or that the goods contained in such receptacle are of a nature or quality different from the real nature or quality thereof, shall be punished with imprisonment of either description for a term which may extend to three year, or with fine, or with both.
Section -488 provides makes use of any such false mark in any manner prohibited by section 487 shall be punished as if he had committed an offence against that section- 487.