Passing off – An Introduction(Intellectual Property Rights)

[YAGAY andSUN]

Passing off is a common law tort used to enforce unregistered trademark rights. It prevents a person or business from misrepresenting their goods or services as those of another, thereby protecting the goodwill and reputation built by a brand, even if it is not registered under trademark law.

⚖️ Definition of Passing Off

Passing off occurs when one party misrepresents their goods or services as being those of another, causing damage to the goodwill of the original brand or business. It aims to prevent unfair competition and protect business reputation.

It is most commonly used where a trademark is not registered, and the rights holder relies on common law protection.

🔑 Essential Elements (the “Classical Trinity” Test)

As laid down in the case of Reckitt & Colman Ltd. v. Borden Inc. (1990), the claimant must establish the following three elements:

1. Goodwill
   • The claimant must prove that their goods or services have acquired goodwill or reputation in the market under a particular name, mark, trade dress, or other identifying features.
2. Misrepresentation
   • The defendant must have made a misrepresentation (intentional or not) to the public that leads or is likely to lead the public to believe that the defendant’s goods or services are those of the claimant.
3. Damage
   • The claimant must prove that they have suffered or are likely to suffer actual or potential damage as a result of the misrepresentation (e.g., loss of sales, dilution of brand value).

🧾 Examples of Passing Off

• A business using packaging deceptively similar to that of a well-known brand.
• A company advertising its services under a name that closely resembles that of an established business.
• Using a domain name that is confusingly similar to a brand name to mislead customers.

🛡️ Protection Against Passing Off

✅ Legal Remedies:

• Injunction: To prevent the infringer from continuing the misrepresentation.
• Damages or account of profits: Compensation for the losses or surrender of gains made by the defendant.
• Delivery up/destruction: Of infringing goods, labels, or packaging.

✅ Preventive Measures:

• Brand Monitoring: Watch for unauthorized use or imitation of brand elements.
• Public Awareness: Advertising to reinforce brand identity and consumer recognition.
• Documentation: Maintain records of use, market reputation, and promotional materials to establish goodwill.
• Registration: Though passing off protects unregistered marks, trademark registration strengthens legal standing and allows for statutory protection under the Trademarks Act, 1999.

⚖️ Passing Off in Indian Law

• Recognized under Section 27(2) and Section 135 of the Trademarks Act, 1999.
• Though unregistered trademarks do not have statutory protection, common law rights through passing off are upheld by Indian courts.

📝 Landmark Indian Case Laws:

• Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (3) TMI 928 - SUPREME COURT)
  Supreme Court emphasized the need to prevent confusion, especially in the pharmaceutical sector, where such confusion can affect health.
• Daimler Benz v. Hybo Hindustan (1993 (11) TMI 244 - DELHI HIGH COURT)
  Prevented the use of “Benz” by an underwear manufacturer, recognizing the value of the brand’s goodwill even in unrelated products.

Here is a comparison chart between Passing Off and Trademark Infringement to help distinguish these two related but distinct legal concepts:

✅ Passing Off vs. Trademark Infringement: Comparison Table

Aspect	Trademark Infringement	Passing Off
Legal Basis	Statutory – under the Trademarks Act, 1999	Common law – based on tort principles (not codified)
Applicable To	Registered trademarks only	Unregistered marks and trade dress with market reputation
Rights Required	Plaintiff must own a registered trademark	Plaintiff must establish goodwill in the mark
Proof of Misrepresentation	Not essential – similarity to a registered mark is enough	Essential – must prove that misrepresentation caused confusion
Proof of Damage	Not mandatory to prove actual damage	Must show actual or probable damage to goodwill or business
Objective	To protect statutory rights of registered trademarks	To protect commercial goodwill and prevent unfair competition
Burden of Proof	Lower – once registration is proven	Higher – plaintiff must establish goodwill, misrepresentation, and damage
Remedies Available	Injunctions, damages, seizure of goods, account of profits	Injunctions, damages, account of profits
Examples	Using an identical registered logo for similar goods	Copying packaging/trade dress of a known unregistered product
Legal Recognition in India	Sections 28, 29, 135 of Trademarks Act, 1999	Section 27(2) and recognized by courts under common law

 

🎯 Key Takeaway:

• Trademark Infringement protects registered rights and requires less proof.
• Passing Off protects unregistered marks but needs more extensive proof, especially of goodwill and damage.

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