Business owners often assume that owning a registered trademark is the only way to stop someone else from copying their brand. In reality, Indian law recognises a second, older remedy that operates independently of registration altogether: the common law action of passing off. Understanding how passing off works, and how it differs from a statutory infringement claim, is essential for any brand owner deciding how to protect a name, logo, or get-up in the Indian market.
What Is Passing Off?
Passing off is a common law tort, not a right created by statute. It protects the goodwill a trader has built up in connection with their goods or services, and prevents a rival from misrepresenting their own goods or services as being those of, or connected with, the established trader. The underlying idea is simple: no one is entitled to sell their goods under the pretence that they are the goods of another. Section 27 of the Trade Marks Act, 1999 expressly preserves this common law right, confirming that a passing off action can be brought regardless of whether the mark in question is registered.
This matters enormously for businesses that have been trading under a name or mark for years without ever filing a trademark application, and equally for businesses whose registration is pending, has lapsed, or is being challenged. Passing off gives them a route to relief that does not depend on the Trade Marks Registry at all.
The Classic Three-Part Test
Indian courts, following the well-established English “classic trinity” formulation, generally require a plaintiff in a passing off action to establish three elements.
- Goodwill or reputation: The plaintiff must show that their goods, services, or business have acquired goodwill or reputation in the market, such that the public associates the name, mark, or trade dress with that particular source. This is usually demonstrated through evidence of sales figures, advertising expenditure, duration of use, market surveys, and press coverage.
- Misrepresentation: The plaintiff must show that the defendant has made a misrepresentation, whether intentional or not, that is likely to lead the public to believe that the defendant’s goods or services are those of the plaintiff, or are connected with the plaintiff. Courts assess this from the perspective of an average consumer with imperfect recollection, not a meticulous comparison of the two marks side by side.
- Damage: The plaintiff must show that they have suffered, or are likely to suffer, damage as a result of the misrepresentation, whether through loss of sales, dilution of reputation, or damage to the distinctive character of their mark.
Indian courts have applied and refined this test over decades, and it remains the standard framework cited in passing off suits before the High Courts and the Commercial Courts.
Passing Off Versus Infringement: Key Differences
Although the two remedies often overlap in practice, since a single act of copying can give rise to both an infringement claim and a passing off claim, they rest on different foundations.
Infringement under the Trade Marks Act is a statutory remedy available only to the registered proprietor of a trademark, or a registered user, against the unauthorised use of an identical or deceptively similar mark for identical or similar goods or services. Once registration and the requisite similarity are shown, the proprietor does not additionally need to prove actual confusion or damage in the same detailed manner that a passing off claim demands; the statute itself creates a presumption of injury to the exclusive right conferred by registration.
Passing off, by contrast, is available to any trader, registered or not, but requires proof of actual goodwill, misrepresentation, and damage as outlined above. It also extends further than word marks and logos. Passing off can protect trade dress, packaging, the overall get-up of a product, and even, in some circumstances, a distinctive business name or the reputation attached to a particular style of service delivery, provided goodwill in that feature can be demonstrated.
Another practical difference lies in the defences available. A registered proprietor’s infringement claim can, in certain situations, be resisted by challenging the validity of the registration itself, for instance through a rectification petition. A passing off claim cannot be defeated merely by attacking a registration, because it does not depend on one; the defendant must instead attack the existence of goodwill or the likelihood of confusion directly.
Why Businesses File Both Claims Together
In practice, most trademark suits before Indian courts plead infringement and passing off as alternative and cumulative causes of action in the same plaint. This is a deliberate litigation strategy. If the court finds, for any reason, that the registration is vulnerable, or that the defendant’s goods do not fall precisely within the specification covered by the registration, the passing off claim can still succeed on its own facts. Pleading both also allows the plaintiff to seek relief in respect of unregistered elements of their brand, such as a distinctive product shape or packaging, alongside relief for the registered word mark.
Courts hearing composite suits typically examine the passing off claim independently, applying the classic trinity test to the evidence on record, even while separately analysing statutory infringement under the Act.
Remedies Available
The remedies for a successful passing off action mirror those available for infringement: a permanent injunction restraining further use of the offending mark or get-up, delivery up or destruction of infringing material, damages or an account of profits, and, at the interim stage, an ad-interim or interim injunction to preserve the status quo while the suit is pending. Given how central the interim injunction is to the practical value of IP litigation in India, courts pay close attention at that stage to whether a strong prima facie case of goodwill and misrepresentation has been made out on affidavit evidence.
Practical Takeaways for Brand Owners
Businesses that have not yet registered a trademark should not assume they have no recourse against imitators; passing off may still be available, provided they can document goodwill through sales records, invoices, advertising materials, and consistent use over time. Conversely, businesses that do hold a registration should still consider pleading passing off alongside infringement wherever unregistered elements of the brand, such as packaging or trade dress, are also being copied. Maintaining organised records of first use, continuous use, and marketing spend from the earliest days of adopting a mark is one of the most valuable, and most commonly neglected, steps a business can take to protect its position later.
By Sevenelementz Legal Associates LLP, Advocates & IP Attorneys, Chennai.
Disclaimer: This article is intended for general informational purposes only and does not constitute legal advice. Laws and their interpretation may change, and individual circumstances vary. For advice specific to your situation, please consult Sevenelementz Legal Associates LLP or another qualified advocate.