Is the constant expansion of the definition of “Passing off” for good?

The Principle of Passing off is basically the law against the tort committed by an entity when he unintentionally or deliberately misrepresents or passes off his goods or services as those of another party’s without that party’s consent and this law is used to enforce registered as well as unregistered trademark rights.

The principle of passing off is different from trademark since like trademark infringement, in passing off, there is no infringement of similar statutory right. Along with trademark, passing off has also existed in Indian law since 1940 in the Trademark Act No.5 and then in the Trade and Merchandise Marks Act (No. 43) of 1958. Even today’s Trademark Act, 1999 the S.27(2) specifically mentions that passing off is not protected under it, but over the years a lot of precedents have been created by the Indian courts, mostly being governed by the requirements mentioned by Lord Diplock[1] and the classic trinity of goodwill, misrepresentation and deception[2], and as a result making it a valid remedy under the common law.

Over time Indian law has developed the concept of passing off making various guiding precedents and case laws, adapting to changes in the commercial world, which has ultimately resulted in its definition being dynamic and expanding. Although the basic principle behind this tort, still in the recent cases acts as the basic guide, that is of preventing anyone from making unfair advantage by using another’s goodwill and reputation without having any right over it.[3]

Due to the flexibility that this remedy allows, people tend to take its advantage in cases in which the statutory laws do not provide protection[4], including the law governing registered trademarks and other intellectual properties as well, due to various factors like inability of registering in the case of trademarks[5]. To avoid misrepresentation, it has been extended and used in cases regarding, products being associated with celebrities[6], contents and ingredients of products[7] and even in completely unrelated products[8]. Taking advantage, companies register their products only in few countries and in case their trademarks are infringed in countries like India that follow common law, they can use passing off as the basis of taking legal action against them, sometimes also taking advantage of well-known trademark or trans-border reputation[9]. Foreign companies and people prefer this in India due to the time taken in registering a trademark here.

The main problem arises when people use this tort to get rid of their competition and invert the principle and purpose behind it, intending to maintain their market share by not letting others enter the industry and monopolising. That is where a limit on the usage of this remedy should be set which is done by the precautionary measures, for instance by S.56 of UK Trade Marks Act, 1994 following Paris convention and TRIPS agreements guidelines.[10] India should also introduce such statute although Indian case laws exist that can regulate its such unethical uses.[11] Also since the Court of Appeal’s warning to not extend the remedy of passing off to such cases concerning law of unfair advantage over competition in the recent Choclairs case[12]traders must anyways limit such use.  

[1] Evren Warnink BV v Townend [1979] AC 731, at 742

[2] Reckitt & Colman v Borden [1990] 1 All E.R. 873

[3] Ramdev Food Prod. Pvt., Ltd. v. Arvindbhai Rambhai Patel & Ors., A.I.R. 2006 S.C. 3304, 50.

[4] Lionel Bently and Brad Sherman, Intellectual Property Law (3rd edn, OUP 2009) 727.

[5] Ibid [4]- ‘Jim lemon’ did not register its lemon as trademark because it could not be, being a common lemon symbol.

[6] Fenty v. Arcadia Group Brands Ltd. [2013] EWHC 2310 (Ch), [2014] ECDR 3.

[7] Evren Warnink BV v Townend [1979] AC 731, at 742 (Warnink)


[9] Prius Auto Industries Ltd. and Ors. Vs. Toyota Jidosha Kabushiki Kaisha, 2017 (69) PTC 45 (Del).

[10] Article 6bis of the Paris Convention; Article 16 of the TRIPS Agreement.

[11] Kamal Trading Co. and Ors. v. Gillette U.K. Ltd. [1988] (8) PTC 1 (BOM); Apple Computer Inc. vs Apple Leasing & Industries [1991].

[12] Cadbury Uk Limited & Anr. vs Lotte India Corporation Ltd. [2014]

Aishwarya Says:

I have always been against Glorifying Over Work and therefore, in the year 2021, I have decided to launch this campaign “Balancing Life”and talk about this wrong practice, that we have been following since last few years. I will be talking to and interviewing around 1 lakh people in the coming 2021 and publish their interview regarding their opinion on glamourising Over Work.


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