No need for separate prayers against infringement of trademark and passing off: Bombay High Court

The Bombay High Court recently observed that setting out two separate prayers in the same plea - one against trademark infringement and another against passing off - is an incorrect, unwise practice (Hindustan Unilever Ltd. v. an opposing Party)..Justice Gautam Patel thus urged advocates to reconsider the manner in which they frame these prayers. Instead, a single prayer for injunction against the defendant from using the impugned mark should be sufficient, the Court held..The order was passed by Justice Patel to address what was, according to him, a question of both form and substance that seems to generally arise in actions against trademark infringement..Stating that having separate reliefs may lead to serious complications, he opined,"In any case, irrespective of the frame of the prayers, I would venture to suggest as a matter of law that the operative injunction order should only be as an injunction without a restriction specifying infringement or passing off. That consideration is to be returned as a judicial finding, i.e., there is a case made out on the cause of action in infringement or passing off, but without affecting the framing of the injunction.".The judge noted that actions against trademark infringement tended to take a standardised form in the High Court. Typically, plaintiffs add a prayer for relief in infringement and a distinct prayer for relief in passing off.Effectively, what is sought is an injunction against the defendant from using the impugned mark, the Court noted..It was observed that just like a single cause led to multiple prayers or relief, multiple causes of action could be coalesced into a single prayer.“When it comes to infringement and passing off, the relief is simply an injunction. It is inconceivable that a defendant would be under an injunction not to infringe, but would be set at liberty to pass off, or vice versa,” the Court held..The Court suggested that by simply seeking an injunction, the same could be granted on either the ground of infringement or passing off.“I am unable to see how any defendant could ever be able to say, for instance, that his use is not an infringing use but is permissibly a use in passing off, or vice versa,” Justice Patel stated..Another reason for praying for a single relief in such suits, according to Justice Patel, was that the segregation of prayers is not made when seeking appointment of a Court Receiver or damages. The order states,“It would be inconceivable to have the Court Receiver seize goods with marks that are infringing but to leave alone those that are used in passing off…For such prayers (Court Receiver, damages, etc), the two causes of action in infringement and passing off are indeed telescoped into one. There is no logical reason, therefore, to separate the injunction prayers.”.Justice Patel relied upon the judgment of S Syed Mohideen v. P Sulochana Bai, which recorded that in a conflict between two registered proprietors, there has to be an evaluation between whose rights are better and superior for the purpose of deciding whether the injunction should be granted..Therefore, Justice Patel concluded that the prayer for relief must be framed as one, simply for an injunction, and that relief could be supported by establishing a cause of action either in infringement or passing off, or both. A plaintiff in such a case may be able to sustain a case for injunction on either or both grounds, the Court added..Justice Patel also clarified that if the plaintiff is not able to make a case in infringement and also cannot make out a case in passing off, injunction will be refused.“As a corollary, the form of the order itself must be simply for an injunction (with such particularisation as the court thinks necessary). This is the consistent practice of the Delhi High Court, and I believe it is the correct one.”.[Read order here]