What Is Passing Off?
Passing off is a common law remedy designed to protect unregistered trademarks. It prevents one business from misrepresenting its goods or services as those of another, thereby protecting the goodwill a brand has earned in the marketplace.
Indian courts recognize passing off as an essential safeguard, ensuring that brand owners who haven’t registered their marks still have legal recourse.
Essential Elements of Passing Off
To succeed in a passing off action, three key elements (the “classic trinity”) must be proved:
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Goodwill or Reputation
The claimant must show that their mark has built up recognition and association with their goods or services. -
Misrepresentation by Defendant
The defendant’s use of a mark, name, or packaging must create a likelihood of confusion, misleading consumers into believing their goods or services come from the claimant. -
Damage to the Claimant
The misrepresentation must cause harm—whether by loss of sales, dilution of brand value, or erosion of reputation.
Remedies Available
Courts in India can grant the following reliefs in a passing off action:
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Temporary or Permanent Injunctions stopping the defendant from using the offending mark.
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Damages or Account of Profits, compensating for losses or unjust enrichment.
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Delivery Up of Infringing Goods for destruction or disposal.
Key Difference From Infringement
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Passing Off protects unregistered marks and requires proof of goodwill, misrepresentation, and damage.
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Infringement protects registered marks, and the owner only needs to prove unauthorized use likely to cause confusion.
Passing off is a vital tool for businesses that rely on unregistered but commercially recognized marks. It emphasizes that in trademark law, use in trade and reputation matter just as much as formal registration.
