Law of Patents and Trade Mark 1994, grants protection for the use of Trademarks in the United Kingdom[1]. Trademarks are used by the companies to provide an identity to the products or services so that they are not imitated by the competitors when launched in the markets. It refers to the symbols which a company has registered and uses for its products including name, image, phrase, design, logo, shape, sound, or a merger of these elements[2]. These are required to be registered so as to protect them against infringement by anyone and a registered trademark is mostly easy to be defended in a court. According to the Trade Marks Act 1994, a person is considered to infringe if he utilizes a sign as similar to that of the particular trademark relating to the goods and services a registered trademark, that are familiar with those for which it is registered[3]. Patents on the other hand also provide protection to the designs or marks if they are innovative, new, and used, to protect them from any sort of misuse. Under trademarks the law of passing off prohibits any individual from falsifying the products and services as that of others, in common law, passing off can be used to discharge unregistered trademark rights. It comprises of the three main elements which are Reputation, misrepresentation, and damage to goodwill and these are important under the law of trademarks these are necessary so as to grant protection to the unregistered goods and services, as the unregistered goods remain out of the domain of legal protection that is granted by the trademarks act, law of passing off protects such unregistered goods from the infringement that may be caused[4]. Under the concept of the dilution in Trademarks, the owner of the famous trademarks forbids other people to use their marks for the reason that it kills the uniqueness or lessens their reputation. In order to grant protection under the Trademarks Act, 1994, the concept of likelihood to confusion is the main criteria for infringement in case of Section 10(2) of the Act[5].
The following paper highlights the similarities and differences between the Law of Passing of and the Law of trademark protection against dilution, followed by the conclusion.
Law of passing off and trademark protection against dilution both provides protection to the owner of the trademark from the unauthorized use of or creation of the goods, services, or products. Another similarity is that both the law of passing off and the law of trademark protection against dilution are applicable to provide protection to famous brands only. In the case, Baby Dry Procter & Gamble v. OHIM[6], the plaintiffs applied for the trademark disposable nappies, the application was refused on eth ground the mark does not specify the object of the product, thus court held; the mark was registrable on the ground that baby dry was represented the same invention. Besides that, both doctrines provide protection to the goodwill of the trader from any form of infringement. For protection to be granted in case of dilution is that such a dilution must be distinctive, famous, or unique, and in case of the passing, the claim of misrepresentation, goodwill, and damage has to be established[7]. In the case, Frank Reddaway Ltd v. George Banham[8], is a famous case on the law of passing off, where the court held, in case of purely descriptive products names often take secondary meaning and are thus protected from passing off. Whereas Dilution must be considered as a kind of harm in passing off as it is the law of registered trademarks as it would expand the scope of protection in favor of traders and encourage fairer commercial practices[9]. In the case, Loreal SA v. Bellure NV[10] court held, the recognition of dilution as damage in passing off would extend the protection against those who reap without sowing and this would encourage healthy competition in the market. Under both the concepts of Passing off and dilution of the trademark the owner has the right to protect their trademarks for the goods and services from getting infringed or misused by the third person. In the case, Perry v Truefitt[11], the court held, that a man cannot distribute his own goods under the pretense that such goods belong to some other person. Further, the court elaborated that he cannot be allowed to use names, etc. by which he may induce the customers to ease that the goods which he is selling are the products of another person[12]. Thus, the court applied the tort of passing off and held the defendant guilty. In passing off, in order to claim the passing off the claimant is also required to show that he belongs to that class of traders whose products are under a distinctive name besides being famous, while in the case of the doctrine of dilution the protection and privileged is provided to the owner of the famous and well-known brand where the owner has to prove about the same. In both the law of passing off and the doctrine of dilution in order to establish the claim of breach under each, the claimant is required to prove the occurrence of actual dilution or passing off, without proving that the claim will not become successful. In the case, Moseley v. V Secret Catalogue, Inc[13]., the Supreme court held, that the occurrence of dilution can only be proved by the evidence of actual damage or harm that has been caused to the famous mark[14]. The evolution of the doctrine of Dilution was initially very slow and the cases were decided under the passing off remedy so both aimed at granting protection to the owner of the famous products from the misuse and damage that may be caused due to the infringement. In the case, Starbucks Limited & Anr v. British Sky Broadcasting Group PLc & Ors[15], the court considered an issue as to that the remote business depends on the goodwill for its name to restrict the actions of passing off, the appellant, in this case, pleaded for passing off, the main contention was whether appellants are eligible to hold goodwill in the jurisdiction. Court held; in order to thrive in passing off it is essential for the claimant to maintain goodwill within the jurisdiction and for the same, it requires to illustrate the presence of the clients or the customers in the jurisdiction for that particular goods and services. Both doctrines of passing off and dilution have the aim of imparting protection to the famous products by preventing the misusing or taking any unfair advantage of the same, so it is necessary to prove the same while establishing any claims[16]. In the case, Montgomery v. Thompson[17], the court held: the cause of action in passing off was independent of the trademark rights and thus was protected, so the court stopped the defendant from using the mark. one of the major similarities is that in the case of both passing off and dilution if any harm is inflicted to the reputation of the trademark it is not considered as an Infringement but in if either of them is harmed then compensation or damages are the common remedy for the breach[18]. In the case, Rihana v. Arcadia/Topshop[19]the claim for damages was against the Topshop which engraved the picture of Rihanna on the T-shirt without her consent or knowledge, the court held it did amount to passing off. So the court passed an injunction order prohibiting Topshop from selling those shirts and imposed a penalty of around £3.3m. In another case, Edmund Irvine Tidswell Ltd. v Talksport Ltd[20] provided the judgement on the concept of passing off, where defendants were successfully sued for using an image of the racing driver. Court held: the plaintiff hold a property right in the goodwill that he saved from the unlicensed use, the defendants were liable for misusing and misrepresenting an image of the racing driver to promote their radio station without the permission. The common law tort of the passing off is applicable in United Kingdom to protect the goodwill and the brand reputation of any business and law of dilution also applies to protect the same, where misusing of the same could amount to blurring or tarnishment of the reputation of the particular brand[21]. In the case, Azumi Ltd v Zuma’s Choice Pet Products Ltd and others[22]the claimant filed a trademark infringement before the IPEC and opposition before the UK Intellectual Property office. The court held; There was trademark infringement in relation to all the signs, except for the company name. the claimant was awarded £66,000since separate proceedings were filed by the claimant. Under general trademark no action can be brought for an unregistered trademark, so both the passing off[23]. In The Sofa Workshop Ltd v Sofaworks[24]the claim was made before the IPEC for passing off, the court held; registration was invalid on the reasoning ththe at the mark is deceptive. Thus the court concluded that there was passing off. Whereas the doctrine of dilution provides protection to the unregistered trademarks from getting misused if they belong to famous brands. Both passing off and trademark aims at protecting the rights of the owner from getting infringed by imparting the protection. In the case, General Motor Corp v Yplon SA[25], the court held in order to satisfy the court, that a particular brand holds a reputation that has been infringed by dilution, it has to satisfy the knowledge threshold criteria as the dilution theory assumes a certain form of mental association with that of the buyer. The damages under both laws of passing off and the doctrine of dilution are unavoidable and mostly comprise the harm to the reputation. In the case, Taylor Bros Ltd v. Taylor Group Ltd[26], the court held the actual reimbursement in passing off could be by rerouting, to reputation, or dilution. Another similarity is that under both the passing off and doctrine of dilution the protection is granted irrespective of the similarity as the independent mark.in the case, of British Sugar PLC v. James Robertson & Sons Ltd[27], the court while considering the question of similarity, held; goods were not similar in the case, despite the fact that the product of the defendant can be easily used as a topping. In the case, United Biscuits (UK) Ltd v Asda Stores Ltd[28], the defendants in this case produced and advertised a chocolate biscuit which they called Puffin while the plaintiffs were into the production of the chocolate biscuit snack which holds a reputation, named penguin. The court held, the two names were quite similar and could create uncertainty in the public minds and they could be deceived as the products belonged to the plaintiff’s brand, thus the court held that there was passing off and hence granted the injunction to the defendant on the ground that the product name amounted to passing off. The causes of action in both the dilution and passing off can be raised together and brought simultaneously and the onus of proving the breach in both cases is on the claimant to provide sufficient evidence that it has protectable goodwill. In the case of Arsenal Football Club v. Reed, the court held; The defendants, in this case, has not infringed certain registered trademarks of the plaintiffs and thus committed the act of passing off. Hence the court rejected the claim of passing off[29]. In the trial of both the doctrines the overall process usually takes a minimum of 18 months and in both cases there is only civil liability for damages and no criminal or administrative liability arises. In the case, The Law Society of England and Wales v. Griffith and another[30], the claim for passing off was established, which was successful. The plaintiffs, in this case, started a scheme called accident line for general advice and the defendants were not competent for the scheme and obtained the same telephone number for providing their own services for the same[31]. The court granted the relief of injunction on the grounds of passing off, stated that it was clearly evident suggesting that the defendants choose their telephone numbers with the intention to change business from the plaintiff, further, the court stated that the beginning impact of confusion would be a loss of business to the members of the plaintiff’s scheme and an underetsimating of confidence in the scheme. Since plaintiffs hold a substantial reputation, misrepresentation by the defendants would damage the goodwill held by the plaintiff[32].
Dilution is a kind of harm which transpire inspite of the confusion being absent as to main place of a product whereas the tort of passing off safeguards against the misrepresentation of one trader that destroys the goodwill of another trader. In Reckitt & Colman Ltd v Borden Inc[33], also known as the Jeff lemon case, Court held: court defined passing off as a type of unfair competition made by unregistered trademark holders to prevent others from copying the mark. Further, the court held: No man may sell his goods as those of another[34]. Further, dilution arises in cases in cases of two similar marks existence which may result in the depletion in the distinctiveness of the one. Whereas passing off arises when one person misrepresents his goods or services as those of others, it can be used to enforce unregistered trademarks as well while the dilution can be used to protect the registered services, goods, or products themselves[35]. Damage under dilution is caused to the existing name under which the owner trades goods and services whereas under the concept of the passing of the damage is caused to the goodwill of the owner by misrepresenting the goods of the owner as their own by another person. In the case, Adidas-Salomon AG and Adidas Benelux BV v Fitness World Trading Ltd[36], the court divided dilution in three elements as free riding, Blurring and Tarnishing[37]. Whereas damage in case of passing off is caused to the goodwill of the person or the business through the act of misrepresentation, resulting in financial or reputational damage. In the case of passing off the use of the plaintiff’s trademark is not important to bring an action whereas in case of dilution this is not applicable[38]. In case of dilution, the burden always lies on the plaintiff to prove that there has been an infringement caused by using the trademark in a manner diminishing the established image of the famous product whereas in the case of passing off the claim of misrepresentation and goodwill must be present in an action for a successful claim[39]. Besides that, the main right that has to be protected under the passing off was goodwill, which is considered as an attractive force in building up the business whereas, under the concept of dilution, the main right that has to be protected is the similar trademarks the use of which might reduce the distinctive quality of the earlier one. Moreover, the concept of passing off is recognized as the tort of passing off whereas the concept of dilution is often recognized as the doctrine of dilution. Under trademark dilution, the owner of the famous brand is empowered to restrict others from using the mark in a way that may diminish its originality. Whereas under the concept of passing off the owner of the famous brand has the right to bring an action against the person misusing the brand name of the owner. The concept of passing off is divided into two parts, inverse or reverse passing off and extended passing off, whereas the concept of dilution is further divided into blurring and tarnishment, where Blurring happens when the differentiation of the trademark is impaired and tarnishment occurs when the person or organization uses the trademark in an offensive manner[40]. Under the concept of trademark dilution, the Patents, and Trademark Act 1994 is the applicable legislation whereas in the case of the Law of passing off there is no legislation applies, however, the passing off can be claimed under the common law tort where the protection is granted to the unregistered trademark[41]. The action under passing may arise on the reasoning that no person can pretense of claiming others’ goods to be his own, whereas under the doctrine of dilution the owner initially forbids the person from using his products and thus prevents his rights under the trademark[42]. In the case, of Eastman Co. v. Kodak Cycle Co[43] the court held, using the similar mark as that of the plaintiff can create confusion in the minds of the consumers besides killing the uniqueness of the mark which has been there over a long time. Cases of passing off are often applicable to prevent intentional or deliberate misrepresentations whereas the case of the trademark is applicable to stop others from misusing the trademark on the reason that it will kill the uniqueness or lessen the reputation of that particular famous trademark[44]. In the case, of BASF pic and BASF AG v CEP (UK) pic, the court held rejected the claim of the plaintiff in the context of passing off on the grounds that such survey evidence would cause confusion among the farmers and thus did not prove passing off. In another case, Baywatch Productions Co. Inc v. The Home Video Channel[45],the interlocutory injunction was granted to the defendant to prohibit them from broadcasting the sexually explicit series. By application of Section 10(2) and 10(3) of the Patents and Trademarks Act of 1994, which states, a person is said to infringe a trademark where he uses the sign similar with the trademark for which it is registered or similar in relation to the goods or services indistinguishable with the registered Trade mark. Court held, it will be irrelevant for section 10(3) to impart security to the non-similar goods and thus the court concluded that there is no evidence supporting confusion[46]. The dilution protection is often aimed to prevent sufficiently impactful and prominent trademarks from overlooking their collusion in the minds of the public with regard to that particular product whereas passing off aims at preventing anyone who misrepresents the products and benefits from the reputation that the particular supplier or owner enjoys[47]. In the case, Decon Laboratories Ltd v. Fred Baker Scientific Ltd[48], in this case, the main contention related to the trademark Decon, where the defendant also used to sell the identical product with the same name, the court held, that a registered trademark is infringed under section 10(3) of the Act focuses on the dilution of trademark and thus there has been an infringement of the registered trademark. Further, the court elaborated that the doctrine of dilution helps in prohibiting fraudulent activities and maintaining the reputation of the companies. In case of passing off to grant protection to unregistered goods, three things have to be established i.e. Goodwill, where the plaintiff established goodwill or reputation of the goods, the caution under this applies where there is a possibility of the damage of goodwill to some business or trading activity[49]. In the case, Commissioner of Inland Revenue v. Muller & Companies Margarine Limited[50]described the goodwill as good name, connection or reputation of a business, which if misused may amount to infringement under passing off. Whereas in the case of Doctrine of Dilution the owner is empowered to stop the third person from using the trademark of the owner with the intention to damage the goodwill or reputation of the owner thus, prevents the infringement. In the case, of Premier Brands UK Ltd v. Typhoon Europe Ltd: ChD 2000, there was a claim by the plaintiffs with respect to the brand mark they used for the sale of tea which was infringed by the defendants as they used the similar mark in the sale of kitchen equipment. Court held, there is no such infringement has been caused as there is no evidence that proves that any damage has been caused to the reputation of the plaintiff’s trademark, thus, the court denied the claim. The concept of the law of dilution is based on the theory of preserving and protecting the distinctive quality of trademark from the use of the same by any third party whereas the concept of the doctrine of passing off is to protect the property which is the goodwill of the owner from getting misused[51]. In the case, Taittinger and others v. Allbev LTD and Another[52], an injunction was granted to stop the labeling of a sparkling fruit drink. The court held, if the defendant consistently uses its product under a similar name as that of the plaintiff it would damage the goodwill of the plaintiff’s products and all the essential ingredients for successful passing off action have been made out, thus court restricted the defendants from using the same name. In another case, Cadbury-Schweppes Pty Ltd and Others v. Pub Squash Co Pty Ltd[53], the defendant, in this case, used alike styles, advertising and names but then later registered it as the trademark, the court held, the claim for passing off did not make out as there were no enough evidence to support the same. In case of dilution of the trademark, the remedy for the breach or damage that has been caused to a trademark, available is an injunction against further dilution whereas in case of passing off the remedies that are available are the suit for injunction, apply for destroying the infringed goods, can sue for damages or seek account for lost profit[54]. In the case, Hodgkinson and Corby Ltd and Another v. Wards Mobility Services Ltd[55]the claimants brought a claim of passing off, the court held; the court denied the claim of passing off as the was not proved, since no allegation of impropriety or unconscionability was made and distinguished.
However, both the doctrines have different applicability under the Trade Mark laws as both impart protection in their respective manner and aim to protect the rights of the trademark holders from getting infringed[56].
Conclusion
The terms passing off and dilution are used extensively in the United Kingdom granting protection against trademark infringement to the unregistered trademarks against their deceptive misuse. Trademarks are used by the companies to provide an identity to the products or services so that they are not imitated by the competitors when launched in the markets. In both, the law of passing off and the law of trademark protection against dilution are applicable to provide protection to famous brands only It refers to the symbols which a company has registered and uses for its products including name, image, logo, phrase, design, shape, sound, or a combination of these elements. The legislation that imparts protection for the use of a trademark is the Law of Patents and Trade Marks 1994. A person is said to infringe a trademark that is registered by the usage of those signs which are familiar with the trade mark of goods and services which are registered.
Patents on the other hand also provide protection to the designs or marks if they are innovative, new, and used, to protect them from any sort of misuse. It comprises of the three main elements which are Reputation, misrepresentation, and damage to goodwill and these are important under the law of trademarks these are necessary so as to grant protection to the unregistered goods and services, both doctrines provide protection to the goodwill of the trader from any form of infringement. For protection to be granted in case of dilution is that such a dilution must be distinctive, famous, or unique. In both Passing off and dilution of the trademark, the owner has the right to protect their trademarks for the goods and services from getting infringed or misused by the third person. The common law tort of the passing off is applicable in the United Kingdom to safeguard the goodwill and the brand reputation of any business and the law of dilution also applies to protect the same, where misusing of the same could amount to blurring or tarnishment of the reputation of the particular brand. Besides in order to bring a cause of action under dilution and passing off, the claim for the causes of action can be raised together. Dilution is a kind of damage that happens in spite the absence of confusion with regard to the origin of the product whereas the tort of passing off protects against the misrepresentation by one trader that affects the goodwill of the other. Moreover, Dilution arises in those cases where the existence of similar marks may result in the reduction of the distinctiveness of either of the one. The above paper highlighted the similarities and differences between the Law of Passing-off and the Law of trademark protection against dilution, followed by the conclusion.
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