In such circumstances, the owners may resort to the common law remedy of Passing Off provided there is use of the mark in question.

In a trademark infringement action, the plaintiff has a choice of commencing either civil or criminal proceedings or both and need only rely on his registered trade mark as proof of his rights to the mark or name. On the contrary, the plaintiff in a passing off action may resort only to civil remedies with the additional burden of proving his reputation and goodwill. Before we proceed further, it is important that we first understand what Passing Off is.

The basis to a Passing Off action is:

1. that there must be a misrepresentation
2. made by a trader in the course of trade
3. to prospective customers of his goods or services supplied by him
4. which is calculated to injure the business, reputation or goodwill of another trader and
5. which causes actual damage to a business or the goodwill of a plaintiff.

In other words, a trader is not allowed to sell his own goods under the pretence that they are the goods of another trader. One cannot simply copy any names, marks, letters or any indicia or the get-up of another’s such as to misrepresent his goods or services to be those of the other and thereby causing confusion to the consuming public.

What is meant by “reputation” actually refers to the name, mark or other feature which because of frequent use, has come to be regarded as identifying the said goods or services coming from a particular source or which has a character associated with its descriptive name, as indicating the said goods or services is of a particular composition, standard, quality or geographical origin.

The fact that only the plaintiff has in the past made use of the name, mark or other feature concerned is not conclusive that it has come to be regarded as distinctive but distinctiveness will readily be inferred when the name, mark or other feature is invented or fancy and has no direct relation to the character or quality of the goods.

Goodwill has been defined as the benefit and advantage of the good name, reputation and connection of a business. It can also be seen as the attractive force which brings in custom and the one thing which distinguishes an old-established business from a newone at its first start. It cannot exist alone as its existence must reside in the exclusive association to the business to which it is attached.

Goodwill may be established in ways such as when a trader packages his goods in the market in such a way that the public would recognize his goods by a distinctive appearance, advertising materials or trading style. Hence the adoption by another trader of that same get-up may divert business and so damage the goodwill of the established trader.

Get-up is the addition to the appearance of a good or an article and its packaging or other non-functional additions to it, which may be protected, provided its appearance is distinctive. An example would be the clear orange plastic wrapper of “Hacks” black mint sweets. The similarity of the get-up, may itself cause confusion especially to the illiterate or uneducated consumers.

Thus it is interesting to note that the final consumer, which is usually also the party so deceived, need not be aware of the plaintiff’s identity. It is sufficient that by being so used to the plaintiff’s goods or services, the deceived party was led to believe that the defendant’s goods or services to be those of the plaintiff or the accustomed source. In the instance where the defendant’s goods are inferior, the plaintiff may suffer additional damage to the reputation of his goods and services.

Upon discovering a possible attempt or actual Passing Off, it would be prudent for the plaintiff to act immediately to stop or curb the extent of damage to his goods or services. Sometimes, it is suffice to issue a Cease and Desist letter to the defendant and reach an out of court settlement. However if this fails, it is thence wise that the plaintiff make an application to the court for an interlocutory injunction for a temporary stoppage of the passing off until such designated date of the trial.

We now know that the rights of trade marks protect logos, names, indicia and the get-up (the appearance) used to identify the business products and services. What legal avenues are then available to the owners of inventions? We seek to introduce you the general concept of Patent, the process of obtaining it and how it benefits the owner in our next newsletter.