Passing off is a tort founded on common law principles. The underlying rule is simple: no person has the right to represent their goods as the goods of another.
The Trade Marks Act, 1999 does not define passing off. It does, however, deny registration to a mark whose use in India would be prevented by the law of passing off, and it preserves the right to bring a passing off action.
That last point is what makes passing off so important in practice. An action for passing off can be brought by a person who has no registered trademark in India at all. Where infringement requires a registration, passing off requires reputation built through use.
The five characteristics
Lord Diplock identified five characteristics of passing off in Erven Warnink BV v J Townend & Sons (Hull) Ltd:
- A misrepresentation;
- made by the defendant in the course of trade;
- to prospective or ultimate customers of the claimant’s goods or services;
- calculated to injure the business or goodwill of the claimant; and
- which causes actual damage to that business or goodwill.
The Classical Trinity
For a claim to succeed, the claimant must satisfy the test applied in Perry v Truefitt and later affirmed in Reckitt & Colman Products Ltd v Borden Inc. Three elements:
Goodwill or reputation. The claimant had acquired goodwill or reputation in the goods, name or mark.
Misrepresentation. The defendant made a misrepresentation, whether intentional or not, through use of the claimant’s mark or by other means, leading purchasers to believe the defendant’s goods or services were the claimant’s or associated with them.
Damage. The claimant has suffered damage, or is likely to, as a result.
Note the second element: intention is not required. An honest trader who innocently adopts a confusingly similar mark can still be liable. This surprises defendants regularly.
Goodwill is the hard part
In most contested cases, the fight is over the first element.
Goodwill has to be shown in India. Evidence typically includes sales figures, advertising and promotional spend, length and continuity of use, media coverage, and market surveys where they are available.
Where the claimant is a foreign brand without Indian sales, the argument runs through trans-border reputation: that the reputation has spilled into India through advertising, media and travel even without local trade. Indian courts accept the doctrine, but they want evidence that Indian consumers actually knew the brand. The Madras High Court’s decision in the 7-Eleven “Big Bite” dispute is a reminder that international fame does not automatically translate into Indian rights, because protection here is rooted in territoriality.
Jurisdiction
A suit for passing off can be instituted in any court not inferior to a District Court.
This differs from infringement in an important respect. For infringement, the Trade Marks Act allows a registered proprietor to sue where they reside or carry on business. That convenience does not extend to passing off, where the ordinary rules on jurisdiction apply.
Where a claim is brought for both infringement and passing off, which is common, this affects where the suit can properly be filed.
Remedies
The reliefs available mirror those for trademark infringement:
- Injunction, interim and permanent.
- At the claimant’s option, either damages or an account of profits.
- Delivery up of infringing labels and marks for destruction or erasure.
As in most Indian IP litigation, the interim injunction stage is where the case is often effectively decided.
Passing off alongside infringement
Most trademark suits in India plead both. They are not alternatives so much as different routes to overlapping relief.
Infringement turns on the registration and the statutory tests. Passing off turns on reputation, misrepresentation and damage. A claimant can lose on one and win on the other. The Kerala High Court has held that where both parties hold registrations, an infringement action is not available, but passing off remains open, which is exactly the situation where the distinction matters.
Frequently asked questions
Can I sue for passing off without a registered trademark? Yes. That is the principal reason the action exists. What you need is goodwill or reputation in India, not a registration.
Does the defendant need to have intended to deceive? No. Misrepresentation can be intentional or unintentional. Innocence may affect the relief granted, particularly on damages, but it is not a defence to liability.
How much reputation do I need? Enough to show that consumers associate the mark with you. There is no fixed threshold, and it turns on evidence. Long, continuous, documented use is the strongest position.
Can a foreign brand with no Indian sales sue for passing off? Potentially, through trans-border reputation, but it requires evidence that the reputation actually reached Indian consumers. Courts have declined where that evidence was thin.
What is the difference between passing off and infringement? Infringement is a statutory action requiring a registration. Passing off is a common law action requiring reputation. Registration makes life considerably easier, which is why it is worth doing.
Useful official resources
- Trade Marks Act, 1999
- IP India public search — to check whether a conflicting mark is registered
- Indian Kanoon — for reported judgments
Facing a copycat and no registration to rely on? Talk to us. Passing off is available, but the evidence needs assembling properly from the start.