Passing Off Action Under Trademark Law

Passing off

Passing off is a common law tort that can be enforced to the unregistered trademark rights. If a person sells his goods as the goods of another then the trademark owner can take action as this becomes a case of passing off. Passing of used to protect or safeguard the goodwill attach to an unregistered trademark. When the trademark is registered by the owner and the infringement happens, then it became a suit for infringement but the trademark is not registered by the owner but infringement happens then it became the case of passing off. The principle of passing off i.e., nobody has the right to represent his good as the good of somebody else was decided.

In the case of Perry v. Truefitt (1842), the concept of passing off has gone undergone changes in course of time at first it was restricted to the representation of one person’s goods and those of another.  Later it was extended to business and services. Subsequently, it is further extended to the profession and non-trading activity.

Today it is applied to many forms of unfair trading and unfair competition where activates of one person cause danger and injury to the goodwill associated with Activities of the person or a group of people.

The most important question in passing off is that: – Whether the conduct of a defendant such and such to conferee public that the business of a person faces financial and reputational injury?

These acts of representation often damage the goodwill of a person or a business causing financial and reputational loss and injury.

Elements of passing off

The three fundamental elements of passing off are: –

  1. Reputation
  2. Misrepresentation
  3. Damage to Goodwill

These three elements are also known as CLASSICAL TRINITY as restated by the house of lords in the case of Reckitt & Colman  Ltd. V. Borden Inc.[1990] , It was stated in the case that in a suit of passing off the plaintiff must be established:-

  1. Goodwill or reputation attach to Goods & Services
  2. He must prove misrepresentation by the defendant to the public.
  3. He must demonstrate that has suffered a loss due to the believe that goods and services are those of plaintiff.

Difference Between Infringement and Passing Off

These two concepts are different from each other. Some of the differences are as follow:

  • The passing off action is provided protection to unregistered goods and services while suit for infringement of trademark is to protect registered goods and services. Although a remedies available in the both cases are same.

In  Durga Dutt v. Navaratan Pharmaceutical AIR 1962 Ker 156, The Supreme Court state out the difference between Infringement and passing off the action for infringement is a statutory remedy Conferred on the owner of the registered trademark and has an exclusive right and has the exclusive right to the trademark concerning those goods. While passing off is available to unregistered goods and services.  

  • The second important point is that the use by the defendant of the trademark of the plaintiff is not essential in an action passing off for but in the case of action for infringement this is not applicable.
  • The third important distinction is to if the essential features of trademark of the plaintiff has been adopted by the defendant the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers for sell marked differences and indicate trade origin different from that of register owner of the mark would be immaterial but In case of passing off the defendant may escape the liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. In case of infringement the burden of proof is always on plaintiff.

In the case of, S.M. Dyechen Ltd. V.  Cadbury (India) Ltd., In this case, an infringement action failed where the plaintiff cannot prove registration or its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show That by imitating the mark otherwise has done what is calculated to Pass off his goods as those of plaintiff.   

Essential elements In passing off

It is essential to succeed in the passing-off action based on the use of the mark or get up that a plaintiff should show that the disputed mark or get-up has become by user distinctive of plaintiff good so that in the use concerning any good of the same kind dealt in by the plaintiff of the mark or get up will be understood by the trade and public as indicating the plaintiff’s goods.

When passing-off action arises or when the suit for passing-off action is filed?

Passing off action arises when there is misrepresentation or when its injuries or harms the reputation or goodwill of the plaintiff and also injuries the business in course of trade and causes actual damages to business or goodwill of the trader by whom the action is brought.

In the case of, Yahoo!Inc. v. Akash Arora and another, 1999 Arb. LR 620, the court held that yahoo India is Creating confusion in the mind of the people, the defendant Yahoo India is the same as plaintiff Yahoo Inc. Therefore, the action of passing off is applied on unregistered goods and services and in infringement suits and in both cases, remedies are same.


Passing off happens when someone deliberately or unintentionally passes off their goods or services like those belonging to another party. This action of misrepresentation often damages the goodwill of a person or business, causing financial or reputational damage. Passing Off is a common law tort that protects the goodwill and reputation of trademark holders against damage caused by misrepresentation by the defendant. The action of passing off can be done by using the trade name, trademark or other get up of the plaintiff to induce in potential purchasers the belief that his goods or business were those of the plaintiff. The tort lies in misrepresentation by the defendant. The misrepresentation is aimed at the potential buyers of the goods or services, who are invited to buy the goods believing that the goods are of the plaintiff.

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