Can a suit for passing off be valid against me?

551 votes

Dear Sir,

Your query concerns around your defence with respect to the suit filed against you for passing due to the use of the mark “GLOBAL”
Please note the defence that you’ve thought about is the right way to defend yourself wherein you should bring to the notice of the court the use of the mark “global” by other numerous entities as you allege.
Secondly yes the mark/word global is a dictionary word which in law means is a generic term and over such words no trademark rights can be bought by the plaintiff specifically.
Apart from the aforesaid also take note of the fact that the plaintiff’s mark is pending registration since 2013 wherein he has shown use of the mark “GLOBAL” since 2005 so in this application since it pending for the last 3-4 years the pertinent fact to notice is that why is this mark not being registered
The reasons could be only 2 that is
One being that the registry has raised objections on the said application because of either its similarity to any other registered mark or because of the generic nature of the mark/word “GLOBAL”.
A better answered could be ascertained if the applicantion of the plaintiff could be perused by me.

Hence with what you have thought about your defence you are good to go.

I hope I have satisfactorily answered your query.

In case if any further clairifaication, don’t hesitate to write to me.

Best regards,
Vaibhav Singh

Advocate Vaibhav Singh LawRato

867 votes

Your argument has good weight, and your legal fundamentals are correct.
However, to conclusively predict the success %, it will be right to peruse the documents filed by other side, and also the documents you wish to file in your support.
Please seek proper consultation for further course of action, whether to contest the suit, or explore an amicable settlement.

Advocate Rishi Raj Sharma LawRato

511 votes

Hi, the point mentioned in your query would the point of your defence. It is suggested that you approach the office of registrar of copy right/trade mark and check whether the marks claimed by plaintiff is registered and re-newed? If not, then defend the case strongly and also file application for rejection of suit.

Advocate Ganesh Singh LawRato

742 votes

You have a good defence against the plaintiff if you: 1st claim that plaintiff does not have a distinctive trademark. 2nd the term global is a generic term and no one can claim ingenuity or ownership over it. 3rd suit is an act of vendetta against you and 4th that balance of convenience does not lie with the plaintiff. 5th No irreparable loss would ensue to the plaintiff if injunction is not granted. Variety of case laws can be found on web, in support of the aforesaid points.
In your written statement you may need to make sure that you do not deny the averment that your mark is a modification of the mark of the plaintiff. You may need to state that your mark is a distinctive mark, and distinctive. And that you cater to different set of consumers than the business of plaintiff (if that’s the case).
The word, “ Gobal” or any term similar to it is neither an invented nor specific word. It has to be considered a generic word more particularly when lakhs of persons or institutions are using it as a part of their trading name or business activities. Even a prior user of the name “Global” by the plaintiff would not confer upon it an exclusive right to use that name to the exclusion of others and pendency of the applications for registration under the Trade Marks Act, 1999 is inconsequential.
In Skyline Education Institute versus S.L. Vaswani, (2010) 1 SCC 345, the Supreme Court held that Skyline is a generic term and that evidence that the term Skyline has been used in trademarks of hundreds of companies in India and abroad is suggestive of its generic nature.
You may come up with argument that your mark, however modified it may be is a distinctive mark altogether. For example in Durga Dutt Sharma case, SC upheld the distinctiveness of trademark Navaratna Pharmaceuticals. You may give the Court an additional point to ponder over and one additional cause for your defence.
It will be a tough task for Plaintiff to prove by way of evidences that the first use of the mark was his. But let me comment here that you have to make sure that all evidences are duly rebutted as higher courts do not generally easily disregard the order of lower court if its based on evidences. Higher Courts only allow substantial questions of law or questions of general public importance.
In case the business of plaintiff and defendants both are different, then no question arises of maintainability of suit for injunction.
Following five elements need to be proved by plaintiff in cases of passing off (1) a misrepresentation, (2) made by a trader 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 goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so
Please refer to Lakhsmikant Patel versus Chetanbhai Shah, (2002) 3 SCC 65 on point of Injunction. For arguments in support, please refer to: Heinz Italia versus Dabur India, (2007) 6 SCC 1.

Advocate Gaurav Gupta LawRato

975 votes

Passing off is a remedy in common law, available for owners or unregistered marks. Given the facts you've stated here, the suit can be contested by you but you are advised to draft your reply very cautiously. Regarding contesting the suit on the ground that there are multiple registered proprietors of the mark, passing off does not require the mark to be registered, so it will depend on all the facts of the matter.

Advocate Manish Khurana LawRato