The Concept of Passing Off in Protecting Unregistered Trademarks

You build a business from scratch, invest years into your brand, and earn genuine goodwill in the market – only to discover that a competitor is selling their products under a name, logo, or packaging so similar to yours that customers are being misled. Your trademark is not registered. Does that mean you have no legal recourse? Thankfully, the answer is no. The common law tort of passing off exists precisely to address this situation, offering meaningful protection even where statutory trademark rights are absent.

What is passing off? 🔗

Passing off is a common law tort that prevents a person from misrepresenting their goods or services as those of another. At its core, it is rooted in the principle that no one should sell their own goods under the pretence that they are the goods of another – a principle first articulated by the English court in Perry v. Truefitt (1842). Over time, this relatively narrow doctrine expanded beyond physical goods to cover services, business activities, and even online commerce.

In India, passing off is not defined under the Trade Marks Act, 1999, but Section 27 of the Act expressly recognizes the common law rights of trademark owners. Section 27(2) makes it clear that nothing in the Act shall affect the right to bring or continue an action for passing off. This statutory acknowledgment preserves the common law remedy alongside the Act’s formal registration-based protections. Critically, passing off applies irrespective of whether the trademark is registered – making it the primary shield available to unregistered trademark holders.

The Supreme Court of India, in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., defined passing off as a species of unfair trade competition by which one person, through deception, attempts to obtain an economic benefit from the reputation that another has established in a particular trade or business. This judicial articulation underscores that passing off is fundamentally an action against deceit and unfair enrichment at the expense of another’s goodwill.

The classical trinity: the three essential elements 🔗

To succeed in a passing off action, the claimant must establish three interconnected elements, collectively known as the “classical trinity.” This framework was authoritatively set out by the House of Lords in the landmark decision of Reckitt & Colman Products Ltd. v. Borden Inc. (1990) – popularly called the Jif Lemon case. Indian courts have consistently adopted this test.

1. Goodwill and reputation 🔗

The claimant must first demonstrate that their goods or services have acquired a goodwill or reputation in the marketplace – one that consumers associate with the claimant as the source. Goodwill here means more than just sales volume. As the Bombay High Court clarified in Torrent Pharmaceuticals Ltd. v. Wockhardt Ltd., the plaintiff must show a genuine linkage or association in the public mind between the product and its maker – a “oneness” between the mark and its source. Mere commercial activity is not enough; the mark must carry meaning for consumers.

This element is particularly demanding for owners of unregistered trademarks. Since there is no registration certificate to rely on, they must produce substantial evidence – such as duration of use, advertising expenditure, market surveys, and consumer recognition – to establish that the mark has become distinctive in the public mind.

2. Misrepresentation 🔗

Once goodwill is established, the claimant must show that the defendant made a misrepresentation – whether intentional or not – that is likely to lead consumers to believe that the defendant’s goods or services are those of the claimant. The misrepresentation does not need to be deliberate; it is the likelihood of confusion about the origin of the goods that matters. However, courts are careful to distinguish between mere confusion and actual deception. As the Bombay High Court noted, “confusion is not always deception, but the purpose of deception is to confuse and confound.” The misrepresentation must go to the source or provenance of the goods.

In the Jif Lemon case itself, Borden’s use of a nearly identical lemon-shaped plastic container for its lemon juice – without copying any name or word mark – was held to be a sufficient misrepresentation. Passing off can protect not just brand names but also the distinctive appearance and “get-up” of a product. This is a broad and flexible protection.

3. Damage 🔗

The third element requires the claimant to show that they have suffered, or are likely to suffer, damage as a result of the misrepresentation. Damage to goodwill can take multiple forms: diversion of customers who mistakenly purchase the defendant’s product believing it to be the claimant’s, or harm to reputation where the defendant’s inferior product is associated with the claimant’s brand. In some cases, courts also consider potential damage where actual harm has not yet occurred but is a real and foreseeable consequence of the misrepresentation.

How passing off differs from trademark infringement 🔗

The distinction between passing off and trademark infringement is fundamental in Indian trademark law. Infringement is a statutory remedy available only to the owner of a registered trademark, while passing off is a common law remedy that operates independently of registration. In an infringement action under Section 29 of the Trade Marks Act, 1999, the claimant’s task is comparatively simpler: they only need to show that the defendant used an identical or deceptively similar mark to their registered trademark. Registration itself establishes the legal right.

In a passing off action, the claimant carries a higher burden. They must prove all three elements of the classical trinity from scratch, since there is no registration to rely upon. As noted in legal commentary on the Act, an unregistered trademark holder does not have an inherent legal right – they must establish it through evidence of goodwill and damage. Additionally, a passing off action is purely civil in nature: no criminal prosecution can be initiated for passing off, unlike infringement, which carries criminal penalties under Section 103 of the Trade Marks Act.

One important nuance: a prior user of a trademark can bring a passing off action even against a subsequently registered trademark owner. Section 27(2) gives priority to actual use and adoption over formal registration – meaning that a business that has been using a mark for years without registering it can still defeat a later registrant if the prior user can establish superior goodwill.

Types of passing off 🔗

Direct passing off is the most straightforward form – when the defendant uses a name, logo, or trade dress identical or highly similar to the claimant’s, causing consumers to believe they are purchasing from or associated with the claimant. The Honda pressure cooker case (Honda Motors Co. Ltd. v. Charanjit Singh & Ors.) is a prominent Indian example: the defendant’s use of “Honda” for pressure cookers was held to be likely to cause confusion given the plaintiff’s extensive reputation in that name, even though the product categories differed.

Indirect passing off occurs when the defendant uses packaging, colour schemes, or trade dress that evokes an association with the claimant’s brand without directly copying the name. In Khemraj v. Garg, the defendant’s duplication of the plaintiff’s panchang’s layout, colour scheme, and visual design was held to amount to passing off even without copying the exact name.

Reverse passing off is a less common but recognised variant: it occurs when the defendant removes the claimant’s mark from a product and markets it under their own name, effectively misrepresenting their goods as originating from themselves when they were actually made by the claimant.

Passing off and the digital landscape 🔗

The doctrine of passing off has kept pace with technology. In Tata Sons v. Manu Kosuri, it was held that rendering of internet services is entitled to the same protection as goods and services under trademark law. Domain names, too, are no longer treated as mere internet addresses – they can serve as trademarks and are entitled to protection under passing off principles. In Yahoo! Inc. v. Akash Arora, the court applied passing off principles to a domain name dispute, awarding damages on the ground that the defendant’s domain name was likely to cause consumer confusion with Yahoo’s established online presence. This demonstrated that domain names can constitute trademarks deserving protection.

Remedies available in a passing off action 🔗

A successful passing off claim entitles the plaintiff to a range of civil remedies under Section 135 of the Trade Marks Act, 1999. These remedies mirror those available in infringement suits, underscoring that the Act treats unregistered trademark holders with a substantive degree of legal protection.

Injunction 🔗

An injunction is typically the most sought-after remedy, as it immediately stops the defendant from continuing the infringing conduct. Courts may grant a temporary injunction at the interlocutory stage – even on an ex parte basis where urgency demands it – to prevent irreparable harm while the suit is pending. A permanent injunction may be granted upon final adjudication, permanently restraining the defendant from using the deceptive mark or get-up. Courts may also issue an Anton Piller Order – a form of search and seize order – allowing the plaintiff to inspect the defendant’s premises to prevent destruction of evidence.

Damages or account of profits 🔗

The plaintiff may elect either financial damages to compensate for losses suffered, or an account of profits – a remedy that requires the defendant to surrender the actual profits made from the wrongful conduct. These are alternative remedies: the plaintiff chooses one or the other. In an account of profits, the damage suffered by the plaintiff is immaterial – what matters is the profit improperly made by the defendant.

Delivery up and destruction 🔗

Courts can also order the defendant to hand over infringing goods, labels, or packaging materials for destruction or erasure. This removes counterfeit or deceptive goods from the market entirely, protecting both the claimant’s brand and consumers from continued exposure to misleading products.

One important limitation: under Section 135(3), damages beyond nominal amounts are not awarded where the defendant can prove they were unaware of the plaintiff’s mark and ceased using it once informed. This protects defendants acting in genuine ignorance, while still allowing the plaintiff to seek an injunction against future use.

Why passing off matters even if you register your trademark 🔗

While trademark registration significantly eases enforcement – removing the need to prove goodwill independently – passing off remains relevant even for registered trademark owners. A registered proprietor may still bring a passing off action in addition to an infringement action, particularly where the circumstances of deception in the marketplace go beyond the technical scope of registration. Moreover, an owner who registered their mark after a prior user had established goodwill may find their registration challenged through a passing off action. The law, in short, rewards those who build genuine reputation – not merely those who file paperwork first.

What do you think? Given that passing off places a significantly higher evidentiary burden on unregistered trademark owners compared to infringement suits for registered marks, should businesses with established but unregistered marks prioritise registration as a matter of legal strategy – or is the common law protection of passing off sufficient? And as digital brands increasingly build reputation through online presence rather than physical trade, how should the goodwill requirement in passing off adapt to capture the realities of internet-based commerce?

References

1. https://depenning.com/blog/passing-off-trademark/
2. https://indiankanoon.org/doc/114856/
3. https://en.wikipedia.org/wiki/Reckitt_%26_Colman_Products_Ltd_v_Borden_Inc
4. https://www.lakshmisri.com/insights/articles/assessing-likelihood-of-misrepresentation-in-matters-of-passing-off/
5. https://www.tannerdewitt.com/passing-off-the-jif-lemon-case-reckitt-colman-ltd-v-borden-inc/
6. https://www.indialawoffices.com/legal-articles/infringement-passing-off-indian-trademarks-act
7. https://www.mondaq.com/india/trademark/735760/passing-off-for-registered-and-unregistered-trademarks
8. https://www.legalservicesindia.com/article/1254/Passing-off-under-trademark.html
9. https://thelegalschool.in/blog/section-135-of-trademark-act
10. https://www.researchgate.net/publication/261181560_Passing_Off_and_Infringement_of_Trademarks_-_India