Important Point: While granting injunction in passing off all three probanda of the Classical Trinity must be satisfied: (1) the existence of the plaintiff’s goodwill and reputation in the mark in question; (2) misrepresentation by the defendant; and (3) the likelihood of damage.--- Actual damage need not be proved; its likelihood is enough.

SECTIONS

A. INTRODUCTION.........................................................................................................3

B. FACTS...........................................................................................................................7

C. ANALYSIS OF THE RIVAL SUBMISSIONS........................ …………………….13

(I) Misrepresentation in passing off .............................................. ……………………..13

(II) Establishing reputation and goodwill in passing off ..................................................25

(III) Delay and acquiescence ............................................................................................32

(IV) Public injury when considering rival pharmaceutical products ............................... 35

(V) General principles on grant of injunctions will apply ................................................38

D. CONCLUSIONS & ORDER........................................................................................38

A. INTRODUCTION

1. The action is in infringement combined with a cause of action in passing off. The only relief pressed in this Notice of Motion, and quite correctly, is for an interim injunction in passing off: the 1st Defendant’s mark is registered in the same class. The matter raises an interesting point about the scope of the common law remedy and whether a restraint order must follow as a matter of course if similarity is shown.

2. There are two issues, perhaps best illustrated thus: the two opposing parties are both registered proprietors of their respective marks. The claimant is the earlier one of the two. The marks may, for the purposes of this statement of the issue, be taken to be sufficiently similar, though not identical, and I will leave aside for the present the parallel argument about adaptation from the names of generics. The opponent has, to the claimant’s knowledge, used its own registered mark for nearly a decade before the suit is brought. In that time, the opponent has grown its business quite substantially. There is an earlier notice, but one issued several years earlier. In the intervening period, there is not a single instance of any confusion or of mistaking the opponent’s product for that of the claimant. This is, therefore, not a quia timet action. Given that an action in passing off is an action in deceit, that is to say, the opponent attempts to masquerade his products as those manufactured by or originating from the claimant, can confusion, deception and deceit be simply presumed, and must an injunction in passing off automatically follow? To put it another way, shown similarity, is deception always to be presumed? Do intervening periods of co-existence without any confusion or deception count for nothing? Settled law tells us that actual proof of confusion or deception is not necessary in the grant of an injunction in a passing off action. Does this principle posit, a priori, that the claimant moves with acceptable despatch? Even if there is no ‘acquiescence’ by the claimant in the sense that word is now understood in this branch of the law, is not the claimant’s passivity for a long time sufficient to denude its claim for interim relief of the equity that must be shown to obtain a restraint order? Is there not a difference between proof of actual deception and confusion — which is what settled law tells us — and proof (even prima facie) of the likelihood of such deception and confusion? The way it has been placed before me suggests that, shown some similarity, in a passing off action deception and confusion are virtually irrebuttable presumptions. All other factors fall into irrelevance. Not only must actual deception and confusion be assumed, but so must their likelihood.

3. This is the second part of the so-called ‘classical trinity’ in passing off action, viz., the question of misrepresentation. The first part speaks to the plaintiff’s goodwill and reputation. The question is always whether high sales or volumes establish