Remedies and Jurisdiction in a Passing Off Suit

In one line

The reliefs in passing off are the same as in infringement because section 135 covers both, but the forum is not, because section 134(2) leaves passing off out.

The reliefs

Section 135(1) is expressed to apply to "any suit for infringement OR FOR PASSING OFF referred to in section 134". So the whole of the section applies to both.

A passing off plaintiff may therefore have:

• an injunction, on such terms as the court thinks fit;
• at his option, either damages or an account of profits, never both;
• delivery up of the infringing labels and marks for destruction or erasure, with or without the money remedy;
• and under section 135(2), an ex parte injunction or an interlocutory order for discovery of documents, preservation of infringing goods, documents or other evidence, or restraining the defendant from disposing of or dealing with his assets so as to defeat recovery.

Chapters 1090 to 1130 work each of these. What follows is what is peculiar to passing off.

The innocent defendant in passing off

Section 135(3)(c) is drafted separately for passing off, and the difference is precise.

No damages other than nominal, and no account of profits, where the defendant satisfies the court

• (i) that at the time he commenced to use the mark complained of he was UNAWARE AND HAD NO REASONABLE GROUND FOR BELIEVING that the plaintiff's trade mark was IN USE; and
• (ii) that when he became aware of its existence and nature he FORTHWITH CEASED to use the mark complained of.

Compare clause (b), for infringement, where the ignorance must be of the mark being on the register.

The reason for the difference is obvious once stated. There is no register for an unregistered mark, so ignorance is tested against use in the market rather than against a public record. And that makes the defence harder in a passing off case, because a defendant in the same trade will usually be taken to know what his competitors are selling.

Jurisdiction

Section 134(1)(c) puts passing off in a District Court or above, in the same terms as infringement: no suit for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

But section 134(2) says "For the purpose of CLAUSES (a) AND (b) of sub-section (1)". Clause (c) is not there.

So the passing off plaintiff falls back on section 20 of the Code of Civil Procedure, and must sue where the defendant resides or carries on business, or where the cause of action wholly or in part arises.