Passing Off — Riva Legal

Passing off is the common law action that protects the goodwill and reputation a trader builds in their brand, name, or get-up — even without registration. It prevents a competitor from misrepresenting their goods or services as those of the original trader, thereby diverting trade and damaging goodwill.

For businesses that have not yet registered their trade marks, or whose marks are registered in some classes but not others, passing off is the primary enforcement tool. Even for registered mark owners, passing off is pleaded alongside infringement because it offers broader protection — covering unregistered marks, trade dress, and reputation in dissimilar goods.

The three elements of passing off

The classical formulation, derived from English common law and adopted by Indian courts, requires three elements:

1. Goodwill or reputation

The plaintiff must demonstrate goodwill or reputation in the mark, name, or get-up. Goodwill is the attractive force that brings in custom. It is built through:

Actual use of the mark in trade
Duration and extent of use
Geographic reach of the business
Advertising and promotional expenditure
Sales volume and market share
Public recognition and consumer association

2. Misrepresentation

The defendant must have made a misrepresentation — express or implied — that leads or is likely to lead the public to believe that the defendant’s goods or services are those of the plaintiff, or are associated with the plaintiff.

The misrepresentation need not be intentional. Even innocent adoption can constitute passing off if it causes confusion. However, deliberate copying strengthens the case and may support aggravated damages.

3. Damage

The plaintiff must show actual or likely damage to their goodwill. Damage can take many forms:

Loss of sales to the defendant
Erosion of distinctiveness (dilution)
Damage to reputation (if the defendant’s goods are inferior)
Loss of licensing opportunities

The “classic trinity” test

The modern Indian test is the “classic trinity” formulated in the English case of Reckitt & Colman Products Ltd. v. Borden Inc. and adopted by Indian courts:

Goodwill — the plaintiff has goodwill in the mark/name/get-up
Misrepresentation — the defendant has made a misrepresentation
Damage — the plaintiff has suffered or is likely to suffer damage

All three must be proved. Courts do not grant relief on speculation.

Forms of passing off

1. Classic passing off

The defendant sells their goods under the plaintiff’s mark or a deceptively similar mark, leading consumers to believe they are buying the plaintiff’s goods.

2. Reverse passing off

The defendant sells the plaintiff’s own goods under the defendant’s mark — for example, removing the plaintiff’s label and replacing it with the defendant’s. The consumer is deceived about the origin, but in the reverse direction.

3. Extended passing off

The plaintiff has reputation not in a specific brand name but in a generic or descriptive term that has acquired secondary meaning — for example, “Champagne” for sparkling wine from the Champagne region, or “Basmati” for a specific type of rice. The defendant’s use of the term on non-genuine products constitutes passing off.

What can be protected by passing off

Indicia	Examples
Trade names	Company names, business names, trading names
Unregistered marks	Logos, slogans, brand names not yet registered
Trade dress / get-up	Packaging, colour schemes, bottle shapes, store layouts
Domain names	URLs that function as trade identifiers
Character names	Fictional characters associated with a business
Well-known personalities	Celebrity endorsements and persona rights (limited)

The difference between passing off and infringement

Aspect	Passing Off	Infringement
Legal basis	Common law	Statutory (Trade Marks Act, 1999)
Registration required	No	Yes
Burden of proof	Heavier — must prove goodwill, misrepresentation, damage	Lighter — registration is prima facie proof
Scope	Broader — any indicia of trade origin	Narrower — the registered mark and specified goods/services
Well-known marks	Section 11(6)–(9) protection + common law	Section 29(4) protection
Damages	Typically lower, harder to quantify	Often higher, statutory basis

A registered proprietor typically pleads both infringement and passing off in the same suit.

Remedies

Civil remedies

Remedy	Description
Injunction	Permanent or interim restraint on the defendant’s use
Damages	Compensation for loss of goodwill and profits — can include exemplary damages for deliberate copying
Account of profits	The defendant must account for and hand over profits earned from the passing off
Delivery up/destruction	Surrender of offending labels, packaging, and advertising material
Cost of suit	Legal costs to the successful party

Anton Piller orders

In passing off cases, courts frequently grant Anton Piller orders (civil search and seizure) to seize counterfeit goods, labels, and manufacturing equipment without prior notice to the defendant.

Defences

1. Honest concurrent use

The defendant may show they have been using the mark honestly and concurrently with the plaintiff, without knowledge of the plaintiff’s reputation.

2. The plaintiff’s mark is descriptive or generic

If the plaintiff’s mark lacks distinctiveness and is used descriptively by the trade, the passing off claim weakens.

3. No likelihood of confusion

The defendant may show that the public is not confused — for example, through market surveys or evidence of distinct trade channels.

4. Laches and acquiescence

Unreasonable delay in enforcing rights, coupled with the defendant’s reliance on the plaintiff’s inaction, may bar relief.

Common misconceptions

“If I haven’t registered my mark, I have no protection”

False. Passing off protects unregistered marks with goodwill. Many of India’s most valuable brand enforcement actions are passing off cases.

“Passing off only applies to identical names”

False. Passing off applies to any indicia that causes confusion — similar names, similar packaging, similar colour schemes, and even similar marketing concepts.

“I can use a famous name if I add a disclaimer”

A disclaimer may help, but it does not automatically defeat passing off. If the overall impression is deceptive, the disclaimer may be insufficient.

“Passing off requires proof of actual sales loss”

False. The plaintiff need only show likelihood of damage. Courts infer damage from the likelihood of confusion and diversion of trade.

Frequently raised questions

How do I prove goodwill?

Through evidence of:

Sales figures and invoices
Advertising expenditure and media coverage
Duration and geographic extent of use
Consumer testimonials and surveys
Industry recognition and awards
Social media presence and engagement

Can I sue for passing off in a different city where I don’t trade?

Yes — if you can demonstrate trans-border reputation. Indian courts have long recognised that reputation can extend beyond the physical territory of trade, particularly for brands with national advertising or online presence.

What is the limitation period?

Three years from the date of the passing off act. For continuing passing off, each act gives rise to a fresh cause of action.

Can I get an interim injunction?

Yes — interim injunctions are routinely granted in passing off cases where the plaintiff can demonstrate:

A prima facie case of goodwill and misrepresentation
Irreparable harm (loss of goodwill is inherently difficult to quantify)
Balance of convenience in the plaintiff’s favour

Is passing off available for services?

Yes — Section 27(2) of the Trade Marks Act explicitly protects against passing off services as well as goods.

Trademark Infringement — the statutory counterpart to passing off
Well-Known Trademark — enhanced protection for famous marks
Trademark Opposition Notice — pre-grant brand protection
See practice area: Intellectual Property

Sources & references

Statutes and case law referenced in this article were current as of the publication date and may have been amended since. Citations link to primary sources where available.