Trademark Passing Off: Definition, Features & Legal Remedies

Introduction

Passing off in trademark law refers to the unauthorised use of another business’s goods, services, or associated goodwill, resulting in misrepresentation and unfair competition in the marketplace. As a common law tort, passing off protects both businesses and consumers by preventing confusion, deception, and exploitation of a brand’s reputation. Under the Indian Trademarks Act, 1999, strong emphasis is placed on safeguarding unregistered trademarks, giving owners the right to pursue legal action against such misuse.

This article explains the concept of passing off, its key characteristics, types, differences, and available legal remedies. Protect your brand and avoid passing off disputes by securing your trademark registration with Auriga Accounting pvt. ltd. today!

What is Passing Off Under the Trademarks Act, 1999?

The Trademarks Act, 1999 recognises the common law remedy of passing off under Section 27, which protects the rights of owners of unregistered trademarks. Passing off allows a business to take legal action against anyone who misrepresents their goods or services as those of the genuine brand, thereby misleading customers and damaging the brand’s goodwill.

In simple terms, the law acknowledges that even trademarks that are not formally registered deserve protection from imitation and deception. The principle is rooted in the historic case Perry v. Truefitt (1842), which established that no one should market their goods as those of another—preserving both business integrity and consumer trust.

Characteristics of Passing Off in Trademark Law

Passing off centres on protecting the goodwill and reputation built around a trademark. Key characteristics include:

1. Misrepresentation
The defendant must misrepresent their goods or services by using identical or deceptively similar trademarks, likely causing consumer confusion.

2. Occurrence in the Course of Trade
The misrepresentation must take place in a commercial setting—such as selling, marketing, or promoting goods or services.

3. Targeting the Same Customers
The misrepresentation should be directed at the customer base that typically purchases the genuine brand’s products or services.

4. Intent and Resulting Damage
Intent to deceive is not always required. Even unintentional misrepresentation can amount to passing off if it damages the plaintiff’s goodwill—through lost sales, brand dilution, or tarnished reputation.

5. Consumer Deception
The key element is that consumers are misled into believing the defendant’s goods or services originate from the plaintiff’s business.

In short, passing off arises when a competitor’s actions deceive customers and undermine the reputation of the genuine brand.

Criteria Defining a Passing-Off Action (The Classical Trinity)

The landmark case Harrods v. Harrodian School established three essential elements—often called the classical trinity—which must be proven in a passing-off action:

1. Reputation / Goodwill
The plaintiff must show that their trademark or business has earned recognition and goodwill through branding, advertising, and consumer trust.

2. Deception
The defendant’s conduct must mislead customers into associating their goods or services with the plaintiff’s established brand.

3. Damage
The plaintiff must demonstrate actual or likely harm, such as loss of sales, diluted brand value, or damage to brand reputation.

Proving these three elements entitles the plaintiff to legal remedies against the passing-off act.

Types of Passing Off in Trademark Law

1. Direct Passing Off
Occurs when the defendant intentionally uses an identical or extremely similar trademark to deceive consumers into believing their products come from the original brand.

2. Indirect Passing Off
The defendant’s mark isn’t identical, but the similarities—visual, phonetic, or conceptual—create a strong association with the plaintiff’s brand, leading to confusion. Proving this type is often more challenging.

3. Reverse Passing Off
The infringer sells the genuine trademarked product under their own branding. Consumers think they are purchasing the original brand, but the infringer gains credit for the product, damaging the true owner’s goodwill.

Difference Between Passing Off and Trademark Infringement

Aspect	Passing Off	Trademark Infringement
Legal Basis	Common Law	Statutory Law
Registration Requirement	Protects unregistered trademarks	Applies to registered trademarks
Focus	Goodwill & Reputation	Exclusive Rights of Registration
Essential Element	Misrepresentation causing confusion	Use of identical or similar registered mark
Plaintiff’s Use	Must prove established goodwill	Use not mandatory
Confusion Requirement	Actual confusion must be shown	Likelihood of confusion is enough

Remedies Available for Passing Off

A successful passing-off claim grants the following remedies:

1. Injunction
A court order stopping the defendant from using the misleading or infringing mark, preventing further consumer confusion.

2. Damages
Compensation for financial losses such as lost sales, tarnished reputation, or reduced brand value.

3. Account of Profits
The defendant may be required to disclose and hand over profits earned through the deceptive use of the trademark.

4. Delivery Up
Courts may order the surrender or destruction of all infringing materials—packaging, labels, advertisements—to eliminate deceptive elements from the market.

About the Author

Ravi

Ravi is a skilled legal writer who breaks down complex laws into simple, actionable guidance. He helps entrepreneurs understand their legal responsibilities, empowering them to build confident, compliant, and sustainable businesses.