passing off

Passing off protects the goodwill of a business, not the mark as property. The claimant must usually prove three things: goodwill or reputation in the goods or name; a misrepresentation by the defendant likely to deceive the public; and damage or likely damage to the claimant's goodwill. It is available whether or not the claimant's mark is registered.

Infringement, by contrast, is a statutory remedy for a registered trade mark, where the claimant need not prove reputation. In India the Trade Marks Act, 1999 expressly preserves the passing-off action. For medicinal products the Supreme Court has applied a stricter test of confusion because of the risk to health.

Example

Though the mark was unregistered, the long-standing reputation of the brand allowed the plaintiff to succeed in passing off against a deceptively similar label.

In Indian law

• s.27(2), Trade Marks Act, 1999 (passing-off action saved)
• Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 INSC 173: test of deceptive similarity, stricter for medicines
• Reckitt & Colman v. Borden (House of Lords, 1990): goodwill, misrepresentation and damage

See also

trademark · copyright · unfair trade practice

Read more in the study notes

• Passing off, assignment, rectification, and offences under the Trade Marks Act (Intellectual Property Rights I)
• Receiving stolen property and cheating (Bharatiya Nyaya Sanhita)
• Dissolution and registration of firms (Contract II)
• Trade marks: meaning, evolution, functions and forms (Intellectual Property Rights I)
• Registration of trade marks: procedure and grounds for refusal (Intellectual Property Rights I)
• Deceptive similarity and infringement of trade marks (Intellectual Property Rights I)