Introduction to Passing Off
It is quite common in today’s news articles to observe statements such as ‘Shop owner sells low grade products with logo of branded company’ or ‘Poor quality products passed off as branded’ etc. Even though the term ‘passing off’ is sufficiently being heard and referred to, however it still remains unclear among general public on what is the actual meaning of the term. From a legal point of view, it would be fair to state that the term “passing off” would refer a situation when an individual or an entity misrepresents its goods or services as that of another to customers for the benefit of sale. This act is likely to give a misleading impression to the end-consumer with regard to the ownership of the products or services that are being provided.
Throughout history, passing off has been observed to have taken several forms, thus leading to widening of its scope. For instance, it was initially limited to only passing off one person’s goods or products as that of another but now it includes passing off services, business, occupations and non-trading activities as well. It also refers to a variety of unfair business practices and unfair competition in which one party’s actions harm or diminish the reputational value of another party.
The ‘law of passing off’, a common law tort, intends to prevent the illegal sale of goods or services as that of another’s. The law of passing off is also codified under Section 27 of the Trademarks Act, 1999 (“Act”) which refers to ‘passing off’ as “passing off of goods or services as the goods of another person or as services provided by another person”. It is pertinent to note that the intention behind the law of passing off is not only to safeguard the rights and interests of trademark owners but also to protect and prevent customers from deception.
Essentials for Passing Off Action
The general essential prerequisites for passing off are as follows :
- misrepresentation to the customer with regards to the ownership of product / service;
- causing confusion among the consumers, resulting in deception;
- likelihood of damage and loss of reputation.
In addition to the foregoing, it may be noted that where a consumer’s initial interest in a product is based on the confusion or deception that there is some nexus between the said product and the products of another company, irrespective of whether the product was purchased or not, is also sufficient prerequisite for ‘passing off’. 
It is also significant to note that passing off may coincide with infringement of trademark if one uses an infringing trademark appearing to be a brazen attempt to mislead and deceive the customers and profit from their goodwill by passing off its goods as those of another’s. This is often considered to be an adequate requisite for an action under Section 134 of the Act which states that a suit for passing off can be instituted when passing off arises out of the use of trademark which is identical or deceptively similar to that of another, irrespective of whether it is registered or not. Further, the similarity or distinction between the product passed off as another’s and the products of such individual / entity is not relevant for an action of passing off.  The act of passing off the products as that of another company in itself is sufficient.
Distinction between infringement and passing off.
|Category||Trademark Infringement||Passing Off|
|Meaning||Unauthorized use of registered trademark (symbol) to deceive similarity.||Misrepresentation of goods/products to deceive similarity.|
|Provision reference||Section 29(1) of the Trademarks Act, 1999 is applicable.||Section 134 (1)(c) of the Trademarks Act, 1999 is applicable.|
|Compliance under law||Registration of Trademark is required||Not required|
|Form of protection||The Trademark protects documented products and services.||Passing off protects unregistered products and services.|
|Burden of proof||The burden of proof is on the user||The user is obligated to not only prove similarity but also violation of the business’s goodwill.|
|Core requirement||Registration is vital and the registered trademark owners are given the right to seek for an injunction under Section 135 of the Trademarks Act and compensation from the infringer.||In passing off, the importance is given for reputational harm and misrepresentation and damage. Injunction can be sought under Section 135 of the Trademarks Act.|
Since a suit for passing off may be initiated under Section 134 of the Act when passing off arises out of the use of a trademark that is deceptively similar to that of another’s, the remedies available for passing off and infringement are generally the same. Section 135 of the Act lays down the remedies available for passing off which are as follows:
- injunction for discovery of documents, preservation of infringing goods, labels, etc. and restriction on defendant from destruction of evidence;
- at the option of the plaintiff, either damages or an account of profits.
In addition to the foregoing, the plaintiff may also seek the delivery of infringing labels and marks for the purpose of destruction.
It is pertinent to note that the abovementioned remedies will not be provided by the court if the defendant satisfies the court that he was not aware that the plaintiff’s trademark was in use and that when it was brought to his knowledge, he/she ceased to use the allegedly infringing trademark.
It has been briefly observed that ‘Passing off’ is often confused with infringement of a trademark due to the reason that, even though they sometimes co-exist, however, they are distinct from each other. Passing off refers to the illegal sale of one’s products as that of another’s, whereas infringement of a trademark refers to the use of a trademark that is similar to that of another’s.
An action for passing off registered or unregistered products / services when coupled with the use of a deceptively infringing trademark has the same remedy as that of an infringement of trademark. However, under a suit for passing off an unregistered trademark, the burden of proof to establish loss of reputation and goodwill is more often difficult from a practical point of view. In this regard, it may be noted that many principles relating to trademark law have evolved and are still developing.
Due to the aforementioned factors, a registered proprietor will always choose to file an infringement lawsuit rather than a passing off lawsuit. Many users who would otherwise not have been able to get any type of legal recourse for the infringement of their marks find relief in the Act’s allowance of unregistered trademarks to some degree of protection.
 Reckitt & Colman Products Ltd. v. Borden INC. and Ors, 1990 RPC 341.
 ITC Ltd. v. Britannia Industries Ltd.,2016 SCC OnLine Del 5004.
 Metropol India (P) Ltd. V. Praveen Industries India (Regd.), 1997 PTC 17 (DB) 779.
Author: Barbie Singh, Senior Associate (assisted by Sahithi Guda).
Disclaimer: The content of this article is intended to provide a general guide to the subject matter and that the same shall not be treated as legal advice. For any queries, the author can be reached at email@example.com