Popular discussion associates infraction of trademark rights with suits for passing off and infringement, with the general distinction being that the former is instituted in the case of an unregistered trademark, and the latter for a registered trademark. The result of this popular association is that it is always assumed that an action for passing off is one which must and necessarily involve the use of a trademark.
What must be understood is that a trademark action, be it for passing off or for infringement, is one that ought to involve use of a trademark in a trademark sense. In other words, the mark must be used as a source signifier.
It is interesting that the law of “trademark passing off” combines actions in equity for reputational harm with principles governing identity and source signification under trademark law. This is precisely why an action for trademark passing off requires:
1. existence of a reputation worth being “passed off”; and
2. the very act of passing off
That said, what constitutes the “act of passing off”? Is the act of passing off limited only to those instances where a mark is used in a trademark sense? Or does it extend to all instances where use of the visible face of the owner, may not amount to use in a trademark sense, but still gives rise to association with the owner?
If it is the latter, should an action for passing off limit itself only to the first situation i.e. use in a trademark sense? If no, and if it extends to the second category i.e. all situations that give rise to association, can the action be called an action of “passing off of a trademark” or would it be a “pure passing off action”?
I am inclined to go with the conclusion that a pure passing off action lies even if use of the mark is not in a trademark sense. That said, I am still not sure that the law on “use in trademark sense” has been etched in stone for all time to come. I think there is still a lot of scope for including hitherto un-encountered situations.
For the purposes of this discussion, let’s take an artistic work which is protected by a copyright, and is also used as a device trademark by the owner of the work. Let’s assume a third party uses the artistic work on his goods, but not in a trademark sense. It is clear that an action for copyright infringement can be made out without much difficulty, but since the use is not in a trademark sense as it is understood today, principles of trademark violation may not be marshalled to allege passing off of the trademark.
Does this mean the owner cannot allege passing off at all? I think it is perfectly possible for the owner to allege “pure passing off”, on the basis that the artistic work/character itself has acquired immense reputation and association with the owner. Therefore, use of the character/artistic work, even if not in the “trademark sense”, amounts to free riding on the reputation of the owner. This is passing off in the strictest sense of the term, which is incidental to copyright infringement.
The above illustration is easier to analyse thanks to the presence of copyright infringement since it involves an artistic work. But, what would be the conclusion in situations where the work is not protected by copyright, and the use is not “trademark use”, but has immense secondary significance to bring about an association with the owner in the minds of the consumer?
For instance, let's take a word mark. What kind of use of a word mark would not constitute use in a trademark sense, but may still give rise to association in the consumer's mind? I can’t seem to think of an appropriate illustration. May be our readers could help us think of the appropriate example.
In the mean time, readers could take a look at this US judgment which is relevant to the discussion, and was brought to my attention by a friend and colleague when I shared my thoughts with her.