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Trademark

Miscellaneous cases of passing off a trademark

The miscellaneous cases of passing off a trademark is been listed below :

Exhibitions and melas

If a name has become associated with the exhibitions held by a person, the use of that name by another for a similar purpose may be restrained.

Plaintiffs had been conducting a Diwali Mela at Krishnaswamy Nagar (name of place in Coimbatore) for a number of years and such melas came to be identified by the name “Krishnaswamy Nagar Mela” defendants subsequently proposed to conduct a similar mela under the same name in Coimbatore.

Professional names

The principle of law relating to passing off involving professional names is that no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man. In all those cases where the court had intervened to restrain passing off, the plaintiffs and defendants were engaged. This may happen in certain circumstances when two persons having identical names carry on the same business or profession.

Name of political parties

Passing off action is not applicable to copying of name of a political party by another political party. They have separate logo that must be placed on their names.

Pseudonym or nom-de-plume

A cartoonist who signs his drawings with a pseudonym can prevent a rival cartoonist from publishing his cartoons under a confusingly similar signature. A pen name is prima facie the property of the author. A publisher can, therefore, be restrained from using the name except upon books written by the author. The law is that the person who writes or performs under a pseudonym is entitled to the property in that name as part of his or her stock-in-trade, unless it can be shown that by agreement, either express or implied, it was arranged that the name should belong to the person or company employing such writer or performer.

An author can recover damages for the injury done to his reputation by the publication of a new edition of his book falsely purporting to be prepared by him although the publisher is the owner of the copyright in the book.

Publication of songs

Where an injunction is sought to restrain the defendant from publishing an old song, the copyright of which he has acquired, so as to lead to the belief that it is a new and recent work of the plaintiff, the plaintiff must allege and prove the existence of two classes of songs.

Title of periodical publication or book or song

Titles of periodical publications or books may be protected by an action for passing off. The principle of law is the same as in other cases of passing off. The plaintiff must establish that the title in question indicates to the public the plaintiff’s book or publication and that the use by the defendant of the same title or a colorable limitation thereof would be calculated to lead to deception.

There is no copyright in the title of a book. Where the owner of a publication claims an injunction to restrain the issue of another publication with a similar name, he must show not only that the assumption of the name by the defendant is calculated to deceive the public, but also that there is a reasonable probability to the plaintiff being injured by such deception.

When a periodical publication is sold, the assignee gets the right to sell not merely one number of it, but continuing to publish subsequent issues from time to time under the name by which it has become known even if the name happens to be the name of the original author or editor of the publication.

The use of the title of a song as the title of the film which did not use any other part of the song may not amount to passing off or infringement of copyright.

Similar names of newspapers

Writ petition to prohibit foreigners from publishing newspapers bearing names identical with existing Indian Newspapers. Every company is registered their business name, trademark and logo for their individual marketing activities.

Name of a cinematographic film

Prior use of particular name for a cinematographic film confers no right in the exclusive use of that name. Only user and reputation will confer a right. In a passing off action is involve to the name of a film the court has to consider not merely the similarity of the name, but the similarity in the make-up.

Title of radio programmes

The plaintiff started a radio programme in the AM frequency under the title “The Gold AM”. It involved a selection of old popular musical hits. Subsequently the defendants announced that one of their radio programme will be entitled “The Gold AM”. It is being purely descriptive of a particular radio programme and it had been used only for about five months.

Title of newspapers & periodical publications and the press & registration of books act 1867

Registration of title of a newspaper or periodical publication under the Trade & Merchandise Marks Act 1958 does not give the owner the right to publish the newspaper for periodical publication. He has to obtain permission under the press & registration of books act 1867.

Newspapers bearing same names

A writ-petition to prohibit foreigners from publishing newspapers bearing names identical with existing Indian Newspapers was declined by the Delhi High Court on the ground that the Government had laid down in 1955 that no foreigner could be allowed to have a newspaper started in India which was identical with any Indian Newspaper.

Character merchandising

In what is called “character merchandising” use is made of the reputation of well-known fictitious characters like Micky Mouse or Superman as trademark in relation to goods not otherwise connected with that character to add to the popularity of the goods.

Names of characters in fiction

The author of a story has no right of property in the names of characters and their addresses in his story. His right of property lies in the goodwill in the actual stories written by him.

Musical acts

If a person’s musical arts or performances have become well known and identified by a particular name, then he has a right to prevent others from performing musical acts under the same name or a colourable imitation thereof as to lead to the belief that such musical performances are the same as those of his own.

Copyright of rival traders ideas

A trader who sets up a new trade has no monopoly in that trader or of the manner of carrying it on. He cannot prevent a rival trader copying his ideas. A distinction must be drawn between what cannot be prevented. Namely, competition and what can be prevented, namely passing off by the use of a name, mark, sign, or get-up which has become distinctive of another’s trade…

Miscellaneous cases of passing off a trademark

Defendant using plaintiffs telephone number

A person who selected a telephone number confusingly similar to another’s may represent that he is the other, either by saying so or by failing to take steps to disabuse anyone calling his number.

Copyright in labels and trade literature

A copyright subsists in an original article work which includes a drawing or engraving. Most of the labels constituting trademarks contain either a drawing or engraving. Such labels can therefore be protected under the copyright act.

False claim to prize medals

It is made by the defendant which were in fact obtained by the plaintiffs might in certain circumstances lead to passing off in which case an action will lie.

Theatrical sketches or plays and cinematographic versions

The owner of a copyright work (for example a theatrical sketch) is entitled to prevent any person from passing off as and for a cinematographic version of that work something which was not the cinematographic version of the sketch, although no version of it had in fact been made. Once obtain the trademark symbol for your business then it may be protected.

Name of entertainment – circus

The plaintiffs for many years had been running a circus at Olympia in Coimbatore which came to be known as “Coimbatore Olympia Circus”. The defendants who were owners of a shop in Coimbatore for animals and birds started a travelling zoo, and added to it circus and advertised it as ” Great Coimbatore Olympia Zoo and Circus”. The defendants were restrained from using the words “Coimbatore Olympia”.

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