The document discusses the concept of passing off, a common law tort that protects a business's goodwill and reputation from false representations leading to unfair competition. It outlines key elements required to prove a passing off action, including the establishment of goodwill, consumer deception, and damage to reputation, as well as the legal implications of notable case law. Additionally, it distinguishes passing off from trademark infringement, emphasizing the different requirements and legal remedies available under each scenario.

1. Concept of Passing off
By Atul S. Jaybhaye
Assistant Professor
Hidayatullah National Law University, Raipur
B.A.,LL.M.,NET
6/25/2020 1

2. Concept of “Passing off”
Meaning:
• “No man can have any right to represent his goods as
the goods of another person.”
• Passing off - a common law tort.
• Passing off- an actionable wrong for any person to
pass off his goods
• Object - to protect the goodwill and reputation of a
business.
6/25/2020 2

3. Concept of “Passing off”
• Passing off- see sec. 27 of TM Act, 1999.
• Use of false representation in passing off.
• Passing off leads to unfair competition.
• Plaintiff needs to prove in a passing off
action:-
I. Goodwill and reputation.
II. Deception on the part of consumers.
III. Damage/injury to goodwill.
6/25/2020 3

4. Concept of “Passing off”
• In Honda Motors Co. Ltd. v. Mr. Charanjit
Singh Delhi HC 2002.
• Held:
• Even if the goods are not same or similar to each other,
then also no one can use the registered trademark of a
company for any kind of goods which may result in the
harm to the business and reputation of the company
which is the owner of the trademark.
6/25/2020 4

5. Concept of “Passing off”
• Honda Motors Co. Ltd. v. Mr. Charanjit Singh
Delhi HC 2002.
• Plaintiff is the well known company having presence
all over the world in the field of Motor Cars.
• The use of trademark HONDA by respondents is
creating deception or confusion in the minds of the
public at large.
• Hence court has restricted the defendants from using
the trademark HONDA in respect of pressure
cookers.
6/25/2020 5

6. Concept of “Passing off”
Imp. Points.
• Under a passing off action, establishing goodwill - a
major ingredient.
• An unregistered trademark, thus has a higher burden
than a registered trademark.
• While under an infringement suit, a legal right is
already available with the plaintiff.
6/25/2020 6

7. 6/25/2020 7

8. SC On Passing off
The Hon’ble SC has defined passing off in Cadila
Healthcare Ltd v. Cadila Pharmaceuticals Ltd
• As unfair trade competition
• A person attempts to obtain an economic benefit of
the reputation.
• which the other has established for himself in a
particular trade or business.
• criteria in order to decide an action of passing off
was laid down in this case.
6/25/2020 8

9. Ervin Warnik B. V. v. J. Townend & Sons Ltd.
[House of Lords]
• Characteristics which must be present in order to bring
action of passing off:
• J. Lord Diplock:
1. Misrepresentation,
2. the act must be made by the defendant in course of
trade,
3. the prospective or ultimate customers of the plaintiff’s
goods and services have been misrepresented,
4. such an act of misrepresentation is calculated to injure the
business or goodwill of the plaintiff, and
5. such act causes actual damage to the business or goodwill
of the plaintiff.
6/25/2020 9

10. Reckitt & Colman Products Ltd. v. Bordan
Incorporation [House of Lords]
• The plaintiff has to pass the Classical Trinity test.
• Goodwill, confusion and damage.
1. that the plaintiff had acquired a reputation or goodwill in his
goods, name or mark,
2. there was a misrepresentation, whether intentional or
unintentional, were associated with the plaintiff’s goods and
services ,
3. that the plaintiff has already suffered damage or is likely to
suffer damage due to such misrepresentation.
6/25/2020 10

11. Reliefs in suits for Passing off
Sec.135
1. Injunction i.e. Interlocutory/ Interim
2. Damages/ accounts of profits.
3. Delivery of the infringing copies/labels/marks.
4. Marks for destruction or erasure
6/25/2020 11

12. Means adopted for passing off
1) Direct false representation
2) Adoption of similar TM/ a colourable imitation of
the TM.
3) Copying the get-up/trade dress/ colour scheme of
the label.
4) Imitating the design or shape of the goods
5) Adoption of an essential part of a rival traders'
name etc.
6/25/2020 12

13. Distinction
Infringement
• Registration of TM is
required.
• If the marks are identical or
deceptively similar no
further proof is required.
• Statutory remedy is
available.
• Can institute the suit for
infringement.
Passing off
• Registration of TM is not
required.
• The use of the mark or
symbol must be likely to
deceive or cause confusion.
• Remedy under common
law.
• Can institute the suit for
passing off.
6/25/2020 13

14. Distinction
Infringement
• Applies only to goods.
• prosecution under criminal
law is easier.
Passing off
• Applies to any business
whether trading or non-
trading, profit making or
non-profit.
• prosecution under criminal
law is difficult.
6/25/2020 14

15. Relevant Cases:
• Sunil Mittal & Anr. v. Darzi on Call CS(Comm) No.
1381/2016
• Britannia Industries Ltd. v. ITC Ltd. FAO(OS) (Comm)
No. 77 of 2016 Division Bench (Delhi High Court)
• Nirma Limited v. Nimma International and Anr.
2010 (42) PTC 307 (Del)
• Colgate Palmolive Company And ... vs Anchor Health
And Beauty Care Pvt
6/25/2020 15

16. Thank you……
6/25/2020 16