Passing off is a form of tort, and its substantive part is founded upon the common law principles. The general principle of passing-off states that no man can have any right to represent his goods as the goods of another person. As stated above, the Trade Marks Act, 1999 does not define “Passing Off”, however, the Act denies the registration of any trademark if the use of the mark is prevented in India by virtue of the law of passing off and enables an individual to claim his rights under the Act, even if the mark is unregistered. Therefore, an action for passing off can also be filed by a person who does not have a registered trademark in India.

There are certain characteristics for categorizing an act as passing-off, and the same were identified by Lord Diplock in the case of- Ervin Warnik B. V. v. J. Townend & Sons (Hull) Ltd. The five characteristics recognized are:

  1. Misrepresentation
  2. The act must be made by the defendant in course of trade
  3. The prospective or ultimate customers of the plaintiff’s goods and services have been misrepresented,
  4. Such an act of misrepresentation is calculated to injure the business or goodwill of the plaintiff, and
  5. Such act causes actual damage to the business or goodwill of the plaintiff.

Further, for the success of claim against passing-off, the plaintiff has to pass the Classical Trinity test, used in case of- Perry v. Truefitt and was later upheld in the landmark case of Reckitt & Colman Products Ltd. v. Bordan Incorporation. The test requires the plaintiff to prove the presence of the following three elements:

  1. that the plaintiff had acquired a reputation or goodwill in his goods, name or mark,
  2. there was a misrepresentation, whether intentional or unintentional, which was done by the defendants by the use of mark of the plaintiff or by any other means (which includes use of similar marks) and which led the purchasers/consumers to believe that the goods and services which were being offered by the defendants are goods and services of the plaintiff or were associated with the plaintiff’s goods and services,
  3. that the plaintiff has already suffered damage or is likely to suffer damage due to such misrepresentation.

Jurisdiction for instituting a suit for infringement:
The jurisdiction to try the matters of passing-off has been given to every court which is not inferior to a District Court.

Remedies for Infringement of a Trademark:
Similar to trademark infringement, the relief which the plaintiff can get in any suit for passing off includes injunction and, at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.