In trademark law, "passing off" is a common law tort that protects the goodwill and reputation of

a business, even if its trademark is not registered. It essentially prevents one party from
misrepresenting their goods or services as those of another, thereby misleading consumers and
unfairly benefiting from the goodwill established by the original business.
Unlike trademark infringement, which is a statutory remedy available only for registered
trademarks under the Trade Marks Act, 1999 (in India), passing off is a common law remedy
that protects unregistered trademarks and trade names. Section 27(2) of the Indian Trade
Marks Act, 1999, specifically recognizes and preserves the common law right to take action for
passing off.

The "Classical Trinity" of Passing Off

To succeed in a passing off action, the plaintiff (the party claiming passing off) generally needs
to establish three key elements, often referred to as the "Classical Trinity" (as laid down in the
case of Reckitt & Colman Products Ltd v. Borden Inc.):
1.​ Goodwill or Reputation: The plaintiff must demonstrate that they have established a
significant goodwill or reputation in their goods, services, or business name. This means
that the public associates the mark (whether a word, logo, packaging, or trade dress) with
the plaintiff's business and its products/services. This goodwill is built over time through
consistent use, quality, and marketing. It's not just about being known, but about having a
positive association in the minds of consumers.
2.​ Misrepresentation: The defendant (the party accused of passing off) must have made a
misrepresentation to the public, leading or likely to lead consumers to believe that their
goods or services are those of the plaintiff, or that there is some association or connection
between the two. This misrepresentation can be express (e.g., directly claiming to be the
plaintiff's brand) or implied (e.g., using a deceptively similar name, logo, or get-up that
creates confusion). The misrepresentation must be in the course of trade.
3.​ Damage or Likelihood of Damage: The plaintiff must show that they have suffered, or
are likely to suffer, actual damage to their business or goodwill as a result of the
defendant's misrepresentation. This damage can include loss of sales, dilution of the
brand's distinctiveness, tarnishing of reputation (if the defendant's products are inferior),
or loss of potential customers. The focus is on commercial harm.

Key Characteristics of Passing Off:

●​ Common Law Remedy: It arises from judicial precedents and not solely from statute.
●​ Protection for Unregistered Marks: It is the primary means of protection for trademarks,
trade names, and distinctive business identifiers that are not formally registered.
●​ Focus on Goodwill: The core principle is the protection of the goodwill and reputation
that a business has earned.
●​ Deception/Confusion: The essence of passing off is the element of deception or
confusion caused in the minds of consumers.
●​ No Intent Required (though helpful): While intentional deception can strengthen a
passing off claim, it is generally not a mandatory element. Even an unintentional act that
causes confusion can constitute passing off if the other elements are met.

Types of Passing Off:

While the core principles remain the same, passing off can manifest in various ways:
●​ Direct Passing Off: The defendant directly uses a mark identical or very similar to the
plaintiff's to represent their goods/services as those of the plaintiff.
●​ Indirect Passing Off: The defendant uses a mark that, while not identical, creates a
strong association or connection with the plaintiff's business, leading to confusion.
●​ Reverse Passing Off: This occurs when the defendant removes the plaintiff's trademark
from genuine goods and replaces it with their own, or attributes the plaintiff's goods to
themselves. This is less common but still falls under the broad ambit.
●​ Extended Passing Off: This applies where a group of traders share a common
reputation in a particular descriptive term, and another party seeks to use that term in a
way that suggests their goods/services are part of that group. (e.g., "Champagne" for
sparkling wine from a specific region).

Remedies for Passing Off:

The remedies available for passing off are largely similar to the civil remedies for trademark
infringement:
1.​ Injunctions:
○​ Interlocutory/Temporary Injunction: To immediately stop the defendant from
continuing the misleading activities during the pendency of the suit.
○​ Permanent/Perpetual Injunction: A final order prohibiting the defendant from
using the mark or indulging in passing off.
○​ Anton Piller Order: To allow inspection of the defendant's premises to preserve
evidence.
○​ Mareva Injunction: To freeze the defendant's assets to ensure recovery of
damages.
2.​ Damages: Monetary compensation for the losses suffered by the plaintiff due to the
defendant's passing off, including lost profits, injury to reputation, and legal costs.
3.​ Account of Profits: An order requiring the defendant to disclose and surrender the
profits they made by misleading consumers and benefiting from the plaintiff's goodwill.
4.​ Delivery Up and Destruction: The court can order the delivery of all infringing goods,
materials, and advertising literature for destruction or erasure of the misleading mark.

Distinction from Trademark Infringement:

Feature Trademark Infringement Passing Off
Legal Basis Statutory remedy (Trade Marks Common law remedy (based
Act, 1999) on judicial precedents)
Registration Requires a registered Can be invoked for
trademark unregistered trademarks or
trade names
Focus Protection of the exclusive Protection of goodwill and
statutory right granted by reputation of a business
registration
Elements - Registered mark <br> - Use of - Goodwill <br> -
identical/deceptively similar Misrepresentation <br> -
mark <br> - In relation to similar Damage or likelihood of
Feature Trademark Infringement Passing Off
goods/services <br> - Likely to damage
cause confusion
Proof Easier to prove; mere deceptive More difficult; requires
similarity to a registered mark is establishing goodwill, actual
often sufficient (presumption of misrepresentation, and
confusion) resulting/likely damage
Intent Not necessary to prove intent to Not strictly necessary to prove
infringe intent to deceive, but often aids
the case
In essence, while trademark registration offers a clear, statutory right that makes enforcement
more straightforward, passing off remains a crucial legal tool in India for businesses to protect
their hard-earned goodwill and reputation, even in the absence of a registered trademark.