Definition
A tort (and common law action) where a person misrepresents their goods or services as those of another — using the latter's trade name, reputation, or get-up — causing confusion among consumers and damage to the plaintiff's goodwill.
Passing off is the common law equivalent of trademark infringement — available even where the trademark is not registered. The three-element test for passing off (from the House of Lords in Reckitt & Colman Products Ltd v. Borden Inc [1990] — adopted by Indian courts): (a) goodwill — the plaintiff must have established reputation in their goods/services; (b) misrepresentation — the defendant represents their goods/services in a way that is likely to deceive consumers into thinking they are the plaintiff's; (c) damage — the plaintiff has suffered or is likely to suffer damage to their goodwill. Passing off protects reputation even without registered trademark. It is available in addition to registered trademark infringement proceedings.
Statutory Definition
No specific statutory provision — passing off is a common law tort. Section 27, Trade Marks Act, 1999: 'Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another person or the remedies in respect thereof.' This provision explicitly preserves the common law passing off action alongside the statutory trademark regime.
Etymology & Origin
From 'pass off' (to sell or present something as something it is not — passing it off as the genuine article). The phrase 'passing off' describes the deception: passing off substitute goods as genuine goods of the established brand.
Full Legal Analysis
Passing Off: Protecting Reputation Without Registration
Registration of a trademark is not always possible or timely. A well-known brand may be used before it is registered; some brands may not meet the technical requirements for registration. Passing off fills this gap — protecting established goodwill and reputation even without formal trademark registration. If you’ve built a reputation, you can stop others from misleading consumers by representing their goods as yours.
The Classic Passing Off Scenario
The classic passing off case: a well-known company (A) has established reputation for a product. A competitor (B) uses a similar name, logo, or packaging to sell their product — consumers buy B’s product thinking they are buying A’s. A sues B for passing off. A must prove: (a) A has goodwill/reputation in the name/get-up; (b) B has made a misrepresentation likely to deceive consumers; (c) A has suffered or will suffer damage. If proved, the court grants an injunction and may award damages.
Extended Passing Off: Shared Reputation
Extended passing off covers situations where a name/description is shared among producers of a specific type of goods from a specific area — 'Scotch Whisky,' 'Darjeeling Tea,' 'Champagne.' Each producer can sue others who misuse the shared name to mislead consumers. This overlaps with Geographical Indication protection but extends to common law without requiring formal GI registration.
“Passing off is the law’s protection of honest commercial reputation. It says to the marketplace: this company built its reputation through years of quality and consistency. No one may free-ride on that reputation by misrepresenting their inferior product as this company’s. Goodwill — once built — belongs to those who built it.”
This Term in Indian Statutes
Trade Marks Act, 1999, 1999
"Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another person or the remedies in respect thereof."
Passing off: common law tort preserved by TMA Section 27 — protects goodwill without requiring registered trademark; three-element test: goodwill, misrepresentation, damage
