In business, a trademark is not just a symbol, name, or logo; it is the identity of a brand. When another party tries to misrepresent its goods or services as those of an established brand, it amounts to passing off. Unlike trademark infringement, which applies when a registered mark is copied, passing off protects the goodwill of unregistered marks.
This blog explains what “passing off” in trademark law means, its essential characteristics, and the remedies available to businesses under Indian law.
Introduction
Trademarks are the public face of a business. Trademarks help customers identify goods and services, differentiate those goods and services from other competitor goods and services, and develop trust in a quality level. However, for that very reason, because they are valuable, trademarks are often misappropriated.
Now, think about it like this – you own a bakery called Sweet Delights that is known for premium cakes. A nearby competitor starts selling cakes called Sweet Delitez and they have essentially similar packaging! You don’t even have the trademark specifically registered, but you have the trademark rights to sue them under passing off, because they are riding on your reputation and creating confusion among customers.
Passing off, therefore, is a common law remedy, whereby the law seeks to protect businesses from dishonest practices that harm goodwill and mislead consumers.
Meaning of Passing Off
“Passing off” means representing goods or services as being those of a different trader. Passing off occurs when a trader deceives consumers, whether intentionally or otherwise, into believing that his products are in some way connected to a brand that is well-established or known.
To summarize- Passing off protects the goodwill and reputation of traders rather than just the trademark itself. Passing off will exist regardless of whether the equivalent mark is registered.
Passing off actions are recognized in India under common law (judge-made law) and expressly supported by provisions in the Trade Marks Act, 1999.
Characteristics of Passing Off
To establish passing off, certain elements must be present. Indian courts often rely on the “Classic Trinity Test” laid down in the famous Reckitt & Colman v. Borden case, also called the “Jif Lemon” case.
Here are the essential characteristics –
1. Goodwill or Reputation of the Plaintiff
- The business must show it has acquired a reputation in the market.
- This could be through years of operation, advertising, or consumer recognition.
- Example: A clothing store running for 10 years under a particular name has built goodwill even without registration.
2. Misrepresentations by the Defendant
- The defendant must have misrepresented its goods or services so that members of the public would view it as being associated with the plaintiff.
- Misrepresentation on the part of the defendant need not be intentional; it is possible for there to be passing off with unintended confusion.
3. Damage or Likelihood of Damage
- The plaintiff must prove actual loss or potential harm due to such misrepresentation.
- Damage can include loss of customers, dilution of brand value, or harm to reputation.
Without these three – goodwill, misrepresentation, and damage, a claim of passing off cannot succeed.
Difference Between Passing Off and Trademark Infringement
It is important to distinguish passing off from infringement –
| Basis | Passing Off | Trademark Infringement |
| Registration | Protects unregistered marks | Protects registered marks |
| Basis of claim | Goodwill and reputation | Exclusive statutory right under the Trade Marks Act |
| Proof required | Goodwill + Misrepresentation + Damage | Mere similarity with a registered mark |
| Remedy | Common law (judicial precedent) | Statutory remedy |
So, even if you have not registered your brand, you are still protected against dishonest competition.
Remedies for Passing Off
Businesses who face harm from passing off can receive remedies from the Indian judiciary system. Remedies typically are –
- Injunction: The court can issue a legal order and injunction restraining the defendant from using the confusing mark or trade dress. Courts sometimes issue an injunction as an interim remedy to ensure there is no further irreparable harm while the litigation is pending.
- Damages or Account of Profits: The plaintiff may seek damages for their losses or compel the defendant to transfer the profit incurred by virtue of their misleading mark and representation of a confusing affiliation with the injured party.
- Destruction of Goods for Infringement: Instances of misrepresentation may result in a court ordering the destruction of goods, packaging, and labels that demonstrate the mark in order to prevent other persons from using the offending mark.
- Costs: In addition to the above, the courts frequently impose legal costs on a party responsible for passing off.
Indian Case Laws on Passing Off
Indian courts have played a crucial role in developing the law of passing off –
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court held that similarity in medicinal products’ names can amount to passing off, stressing public health risks.
- Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004): Passing off extended to domain names; internet users must not be confused between similar-sounding websites.
- Mahendra & Mahendra Paper Mills v. Mahindra & Mahindra Ltd. (2002): Even phonetic similarity was held to cause deception.
These cases highlight how courts protect both consumer interests and business goodwill.
Preventative Measures to Counter Passing Off
Instead of waiting to dispute when issues arise, businesses can take preventive measures –
- Trademark Registration: While passing off protects unregistered marks, registration will provide you with ample statutory protection.
- Market Tracking: Be vigilant and regularly check for copies in the market.
- Cease and Desist Notices: If you notice someone copying your brand, act swiftly and give them a warning
- Brand Specifics: Try to develop logos, colourways and/or packages that are not easily confused with others.
Conclusion
Passing off is actually about honesty in trade. It prevents rogue businesses from profiting off the goodwill and reputation that another person has developed with hard work. The message for brand owners is that it is possible to have protection from the law even without formal registration; however, if the mark is registered, trademark owners will benefit from greater enforcement rights.
With familiarity with the meaning, characteristics and remedies for passing off, businesses can protect their brand, maintain customer trust in their brands, and enhance long-term viability and success in a highly competitive market.
References
The Trade Marks Act, 1999 (Act No. 47 of 1999)
The Trade Marks Rules, 2017
https://www.ipindia.gov.in/trade-marks.htm
