Passing off: the common law action and its remedies

1. The principle

Passing off rests on the principle stated by Lord Langdale in Perry v. Truefitt (1842): a trader may not sell his own goods under the pretence that they are the goods of another. The action protects not the mark as such but the goodwill of the business, which Lord Macnaghten in IRC v. Muller & Co.’s Margarine (House of Lords, 1901) described as the attractive force which brings in custom. The mark, name or get-up is protected because it is the vehicle of that goodwill.

2. The elements

The classical trinity

Lord Oliver in Reckitt & Colman Products v. Borden (House of Lords, 1990), the Jif Lemon case, reduced the action to three elements:

1. Goodwill attached to the goods or services, in the mind of the purchasing public, by association with an identifying get-up, name or mark;
2. Misrepresentation by the defendant to the public, whether intentional or not, leading or likely to lead the public to believe that his goods or services are those of the plaintiff;
3. Damage, or a likelihood of damage, to the plaintiff’s goodwill by reason of the erroneous belief.

Lemon juice sold in plastic lemon-shaped containers by Borden was held to pass off Reckitt’s Jif lemon, because the shape had come to denote Jif to shoppers who did not read labels.

Lord Diplock’s five characteristics

In Erven Warnink BV v. J. Townend & Sons (House of Lords, 1979), the Advocaat case, Lord Diplock identified five characteristics: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader, in the sense that this is a reasonably foreseeable consequence, and (5) which causes actual damage or will probably do so.

Extended passing off

Advocaat confirmed that a group of traders who share goodwill in a descriptive name for a class of product may sue a trader who misuses it, following Bollinger v. Costa Brava Wine (1960) on “Spanish Champagne”. This is the common law ancestor of GI protection. False endorsement is a further extension: Irvine v. Talksport (Court of Appeal, 2003) allowed a racing driver to recover for an advertisement suggesting he endorsed a radio station.

3. Passing off and infringement distinguished

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 INSC 221, the Supreme Court set out the distinction that every answer should contain:

4. The Indian cases

• Laxmikant V. Patel v. Chetanbhai Shah, 2001 INSC 594. The plaintiff ran “Muktajivan Colour Lab and Studio”; the defendant opened “Muktajivan Colour Lab” in the same area. The Court held that passing off protects trade names as well as marks, that a person may not adopt a name that is identical or similar to an existing business’s name in a way likely to deceive, and that an interim injunction should ordinarily follow once a prima facie case of passing off is made out. Proof of actual damage is not required at that stage.
• Cadila Health Care v. Cadila Pharmaceuticals, 2001 INSC 173: the factors for deceptive similarity in a passing off action on an unregistered mark.
• N.R. Dongre v. Whirlpool, 1996 INSC 971, and Toyota v. Prius Auto Industries, 2017 INSC 1230: goodwill and reputation of foreign marks in India, and the territoriality requirement.
• Satyam Infoway v. Sifynet Solutions, 2004 INSC 368: passing off applies to domain names.
• S. Syed Mohideen v. P. Sulochana Bai (Supreme Court, (2016) 2 SCC 683): a passing off action lies even against a registered proprietor. Section 27(2) preserves passing off, and section 28(3) does not protect a registrant against a prior user’s goodwill. The rights of a prior user in passing off are superior to registration.

5. Remedies for the proprietor

Civil remedies (section 135)

In a suit for infringement or for passing off, the relief includes an injunction and, at the plaintiff’s option, damages or an account of profits, together with an order for delivery up of infringing labels and marks for destruction or erasure (section 135(1)). Section 135(2) allows ex parte injunctions and interim orders for discovery of documents, preservation of infringing goods and evidence, and restraint of dealing in assets to defeat recovery. Under section 135(3), in certain cases of innocent use, the court shall not grant damages (other than nominal) or an account of profits.

Interim injunctions

The principles are prima facie case, balance of convenience and irreparable injury. In trade mark cases the Supreme Court has held that an injunction should normally follow where infringement or passing off is prima facie shown, and that mere delay is not a ground to refuse it where the adoption was dishonest: Midas Hygiene Industries v. Sudhir Bhatia (Supreme Court, 2004). Ramdev Food Products v. Arvindbhai Rambhai Patel, 2006 INSC 563, restated the tests and the limited scope of appellate interference.

Forum

Section 134(1) requires suits for infringement, and for passing off arising from the use of a mark identical with or deceptively similar to the plaintiff’s mark (registered or not), to be filed in a court not inferior to a District Court. Section 134(2) lets the plaintiff sue for infringement where he resides or carries on business. In Dhodha House v. S.K. Maingi, 2005 INSC 617, the Court held that this extended forum does not apply to a passing off claim, which is governed by section 20 of the CPC, so a composite suit can be filed only where the court has jurisdiction over both causes of action.

How this is examined

Answer the 2025 question in three parts: the concept and elements with the English cases, the distinction from infringement with Durga Dutt and the Indian cases, and the remedies with sections 134 and 135. A passing off problem is solved by taking goodwill, misrepresentation and damage in turn, then the relief.