The Karnataka High Court recently summarised the principles which must guide the Courts in an inquiry into an action for passing off in respect of ‘get up’ of the product or service.
Observing that in most cases the ‘get up’ would be composed of a variety of marks including visual marks or verbal expressions, it stated that it is not every aspect/feature that the Court must take interest in. According to it ‘material misrepresentation’ occurs when the central or prominent feature of plaintiff’s goods/service is embodied in the defendant’s such a way that the public may be led to believe that there is or may be a relevant connection between the two parties.
Identification of essential features
The High Court was also of the view that similarity in essential features (those which help in identification of source) and not in unessential features, is what amounts to misrepresentation. It noted that similarity in unessential features, howsoever strong, amounts to mere copying without the strength to deceive. Laying down the steps, the Court stated that at first the fine distinction between the meaning of ‘distinctiveness’ in law’ and ‘distinctiveness’ in the everyday sense should be used in filtering out the essential features from the unessential.
According to the Court, the Courts should then study the extent of distinctiveness among the essential features of the plaintiff’s goods in a relative sense. In this regard, it stated that a descriptive term may be sufficiently distinctive to be protected against idle copying but may still not enjoy protection of such wide scope as a term which is wholly arbitrary.
Test of deceptive similarity
Further, the Courts should conduct the test of ‘deceptive similarity’, i.e., inquire if the defendant has adopted the essential features so identified so as to lead persons of average intelligence into accepting goods of defendants as that of the plaintiff.
The High Court in this case ITC Limited v. CG Foods (India) Private Limited [Judgement dated 28 September 2021] also laid down steps for this test of deceptive similarity. It stated that the Court must first, construct the hypothetical purchaser. Noting that the standard of ‘perceptive abilities’ of such purchaser is not constant, the Court noted that conception of the ‘ordinary purchaser’ in Pasquali Cigarette Co. Ltd. v. Diaconicolas & Capsopolus would be helpful.
Finally, in respect of the rules governing comparison of the marks, the Court was of the view that the comparative appreciation based on the rules/factors must be made from the perception of the hypothetical purchaser.
The Court also stated that in passing off actions based on get up cases, the plaintiff must show that deception is likely, notwithstanding the absence of his own brand name on the defendant's goods and the likely presence there of the defendant's brand name and other distinguishing matter.