62

CHAPTER-3

DEFINITION OF PASSING OFF

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CHAPTER-3

DEFINITION OF PASSING OFF

A. INTRODUCTION
The tort of passing off has developed into a powerful branch of intellectual property,
expanding to be of application far from its original use in the nineteenth century.
Consequently, its definition has also undergone changes with the efflux of time. It has
gone through a process of growth, extending its traditional boundaries, and being
successfully applied by traders to provide remedies in many novel situations.1 2 The
3 law of
passing off is sometimes referred to as the law of “common law trademarks”, because so
often the goodwill and reputation of a business is associated with its trademarks. It
recognises that there may be rights in a business with unregistered trademarks by virtue of
substantial goodwill and reputation. Passing off is a judge made law.
A passing off action is essentially an action in tort. The purpose of this tort is to protect the
commercial goodwill and to ensure that people’s business reputations are not exploited.
Since ‘goodwill’ in business is an asset, and therefore, a species of property, the law
protects it against encroachment. What is protected is an economic asset. It secures
reasonable area of monopoly to traders. It is thus complimentary to trademark law which is
founded upon statute rather than common law. But there is a difference between statute
law relating to trademarks and passing off action; while registration of a mark itself gives a
title to the registered owner, the onus, in a passing off action, lies upon the plaintiff to
establish the existence of a business reputation he seeks to protect. The asset protected is
the reputation that the plaintiffs business has in the market. It is a complex matter and is
manifested in various indicia which lead the customer to associate the business with the
plaintiff; such as the name of the business, whether real or adopted, the mark, the design,
make up, or colour of the plaintiffs goods, their distinctive character or the nature of their
special processes. A passing off action arises around encroachments upon such indicia. It
has been said that the law of passing off can be summarised in one short proposition-“no
man may pass off his goods as those of another”.
The law of passing off has been equated to “unfair competition by misrepresentation” In -
U.S.A, passing off is treated as a form of unfair competition and the subject is referred to
under that heading.

1 Rembert Meyer-Rochow- “Passing off- Past, Present and Future” (Vol. 84) Trademark Ren p. 38.
2 K S Shavaksha- “The Trade and Merchandise Marks Act 1958” p.129 (1999,3rd Edition).
3 P. Narayanan- “Law of Trade Marks and Passing off’ p.685 (2004,6th Edition).
 64
The gist to the conception of passing off is that the goods are in effect telling a falsehood
about themselves, are saying something about themselves which is calculated to mislead.
The law on this matter is designed to protect traders against the form of unfair competition
which consists in acquiring for oneself, by means of false or misleading devices, the
benefit of the reputation already achieved by rival traders.4
The foundation of all liability in the passing off is misrepresentation, the action has its
beginnings as a form of the action on the case for deceit, and misrepresentation continues
to be its core element. Unlike the closely related tort of injurious falsehood, however
passing off requires the misrepresentation to be a relevant one, and thus places limits upon
the kind of false statements that are capable of triggering liability. A relevant
misrepresentation may be made by the use of any symbol (whether a trademark, a name, a
get up, a product shape, an advertising campaign or even an ambience) that has come to be
recognised as signifying a particular source of the goods. It is unnecessary that buyers be
aware of the identity of this source, for the defendant will be liable so long as they are
caused to believe that its goods emanate from the same source as the goods bearing the
imitated symbol that they have previously encountered.5
The action for passing off is a common law remedy and its gist is deceit. The law casts an
obligation on the defendant not to pass off its own goods (or work) as if they had been
produced by the Plaintiff.6
The modernisation of the tort of passing off lies in this that what was previously a
misrepresentation of goods have now become a misappropriation of another man’s
property in the business or goodwill or misappropriation of another’s personality.7
What is protected in an action of passing off is an economic asset. The plaintiff must
establish that his business or goods have acquired the reputation he alleges and this can be
done by showing that a substantial proportion of people who are likely to become
purchasers of the goods of the kind in question associate the name with them. The weight
of this burden must vary according to facts. It is the tendency to mislead or confuse that
forms the gist of action; and the plaintiff need not establish fraud nor that any one was
actually deceived, or that he actually suffered damage. The test is thus like libel i.e.
actionable per se. Indeed the forms of passing off, like the forms of nuisances are infinite.

4 Salmond- “Law of Torts” p. 401 17th Edition.

5 Suman Naresh- “Passing Off, Goodwill and False Advertising: New Wines in Old Bottles”,
Cambridge Law Journal. Vol. 45 (1), March 1986, p.99.
6 Khemrai Shrikrishan Das v. Garg & Co. AIR 1975 Del 130.
7 B.K. Engineering and Co. v. U.B.H.I Enterprises 1985 PTC 1.
 65
Loss of sales is not the only form of probable injury that will suffice, loss of reputation has
a
been accepted as sufficient.
No passing off action is likely to succeed when it is based on the use of the plaintiff’s
trademark, unless it is shown that the mark used by the defendant is identical or similar to
the plaintiffs trademark and that it had been used in such a manner as to lead persons to
consider that mark was being used as a trademark, meaning thereby that the goods were
the goods of the persons who had a right in the trademark or in a manner as to indicate that
the goods were of the other person. How the suit is framed or the relief claimed is alleged
to be in connection with the passing off of the goods or be claimed in connection with the
infringement of the trademarks makes no difference.89
In United States of America, the term unfair competition is a broad term covering a wide
variety of deceptive practices in the marketplace. The law of unfair competition continues
to evolve with changes in the marketplace. The most commonly alleged forms of unfair
competition are passing off (selling ones goods as those of another); misappropriation (the
taking of another’s intangible commercial property right); infringement of the right of
publicity (appropriating another’s identity or persona for commercial purposes); false
advertising (making false or deceptive representations about the nature of one’s own goods
or services); product disparagement (making false or deceptive representations about
another’s goods or services); dilution (weakening or tarnishing the value of another’s
trademark or service mark even though the use does not cause a likelihood of confusion);
and infringement of trade dress (causing confusion with the distinctive product image or
overall appearance of another’s product or service).10
The law of unfair competition is based upon the notion that individuals should be
protected from deceptive and improper conduct in the marketplace. The law of unfair
competition is found in case law, in the state statutes prohibiting unfair business practices,
in specific federal statutes, and in regulations promulgated by FTC (Federal Trade
Commission). The law of unfair competition continues to evolve as new methods of
conducting business arise, such as electronic offers and sales through telemarketing,
television infomercials, and internet11
Passing off is a single common law cause of action which can apply in a very wide range
of factual situations. The breath of the tort is such that, despite some views to the contrary,

8 Infra n. 18 p. 132.
9 Tekchand Fillumal v. Western India Match Co. Ltd. AIR 1955 All 404.
10 Deborah E. Bouchoux- “Intellectual Property: The Law of Trademarks. Copyrights. Patents, and Trade
Secrets” p. 359 (2001).
 66
it now happens to be generally accepted that it is permissible to define two forms of the
tort: the classic form, defined by the “classical trinity”, and the “extended form”, typified
by the Champagne, Sherry and Advocaat cases. These two forms are not different torts, it
is simply more convenient for the purposes of analysis of a particular case to define
passing off by reference to one or other of these forms12
B. DEFINITION OF PASSING OFF
The law of passing off contains sufficient nooks and crannies to make it difficult to
formulate any satisfactory definition in short form.13
As per Wikipedia, the free encyclopaedia, “passing off is a common law tort which can be
used to enforce unregistered trademark rights. The tort of passing off protects the goodwill
of a trader from a misrepresentation that cause damage to goodwill. The law of passing off
prevents one person from misrepresenting his or her goods or services as being goods or
services of the claimant, and also prevents one person from holding out his or her goods or
services as having some association or connection with the plaintiff when this is not
true.”14
Passing off action is common law remedy for the unregistered trademarks which have
acquired sufficient goodwill, against the unauthorized use of the mark by a third party. It is
often used as an alternative remedy to trademark infringement. Traders whose marks
remain unregistered but nevertheless have acquired sufficient goodwill (through the use
made of them) can rely on passing off action to protect their unregistered right in the
mark.15
Passing off has been defined as “an actionable wrong for the defendant to represent, for
trading purposes, that his goods are those or that his business is that of the plaintiffs...”
It is very difficult to define the term, much less precisely. All the same, this expression
“passing off’ has come to acquire a definite connotation. “Passing off’ has been described
in Jowitf s Dictionary of English Law, Volume 2 (Second Edition) as under:
“the wrong committed by a person who sells goods or carries on business, etc. under such
a name, mark, description or otherwise in such a manner as to mislead the public into
believing that the goods or business, etc are those of another person. The latter person has
a right of action in damages or for an account, and for injunction to restrain the defendant
for the future.”

12 David Kitchen, David Llewelyn, Janies Mellor, Richard Meade and Thomas Moody-Stuart
“Kerlv’s Law of Trade Marks and Trade Names” p. 413 (2001, 13th Edition).
13 Conaara Inc v. McCain Foods ('Australia') Ptv Ltd (1992) 106 A.L.R. 465.
14 http://en.wikipedia.org/wiki/Passing_off (last visited May 2,2008).
15 http//www.lawdit.co.uk (last visited May 2,2008).
 67
In Stround’s Judicial Dictionary, Fourth Edition, “Passing off’ has been described as
follows:
“Passing off goods is when a trader by some device induces or endeavours to induce
purchasers or persons who may become purchasers, to believe that the goods offered for
sale are of a kind, or quality, or from a source, or having a reputation, other than their own,
e.g., by improperly using TRADE MARK or a TRADE NAME or its distinctive part.” The
law of passing off arose to prevent unfair trading and protects the property rights of a trade
in his goodwill16
In Encyclopaedic Law Dictionary by Biswas, “Passing off’ has been described as: “Selling
goods or carrying on business in a manner calculated to mislead the public into believing
that the goods, business etc., are those of another.”
Taking business by presenting goods or services as someone else’s is actionable at
common law.17 The tough competition in trade and the desire to earn money in the easiest
manner result into the use of goodwill and reputation of trade and settled business of
others by using the trademarks of others. This means passing off.18
Passing off has been defined by Clerk & Lindsell as: “It is an actionable wrong for a trader
so to conduct his business as to lead to the belief that his goods, services or business are
the goods, services or business of another. This tort is known as “passing off’.19 Passing
off has been defined as: “an action against an imitator who is reaping without sowing”.
The action of passing off is often concerned with the representation relating to a title,
name, or get-up but is not limited to these. It applies equally to other indicia or material
01
which has given a business a distinctive character.
It has frequently been stated that the law of trademarks is but a part of the broader law of
unfair competition, the general purpose of which is to prevent one person from passing off
*yy
his goods or his business as the goods or business of another.
Passing off (also referred to as palming off) occurs when one party attempts to pass off its
goods under the pretence that they are the goods of another. Passing off may exist when
one party affixes another’s trademarks to its goods, adopts a trademark or trade name that
is so similar to that of another that the consumers are deceived as to the source of the

16 Winfield- “Tort” p.485 9th Edition.

17 http://www.ipit-update.com/passingoff.htm (last visited May 2,2008).
18 Dr Vikas Vashishth- “Law and Practice of Intellectual Property” p. 128 2nd Edition.
19 Margaret R Brazier- “Clerk & Lindsell on Torts” p.1403 (1995, 17th Edition).
20 W.R. Cornish “Unfair Competition, A Progress Report” Journal of the Society of Public Teachers
of Law Vol XII, 1972-73 p. 126.
21 Kevin Garnett, Gillian Davies and Gwilym Harbottle- “Coninger and Skone James on Copyright”
p.976 (2008, 15th Edition).
22 American Jurisprudence- “Suretiship to Treaties” p.753 (Vol. 74) 2nd Edition.
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product or service, or copies the features of another’s goods so that its goods are
confusingly similar to those of the other. The essence of the action is some representation
by a defendant, whether direct or indirect, that causes consumers to be deceived about the
source of purchase.
1. Classic Definition
The classic form of passing off is also called classic trinity. In the Singer Manufacturing
Company Case23 a case on passing off, it has been observed: “no man is entitled to
represent his goods as the goods of another man; and no man is permitted to use any mark,
sign or symbols, device or other means, whereby, without making a direct false
representation himself to a purchaser who purchases from him he enables such a purchaser
to tell a lie or to make a false representation to somebody else who is the ultimate
consumer.” This principle has been followed in the Thomas Bear & Sons (India! Ltd
Case24 It has been held that a man is not to sell his own goods under the pretence that they
are the goods of another man: he cannot be permitted to practice such a deception nor to
use the means which contribute to that end. He cannot, therefore be allowed to use names,
marks, letters or other indicia, by which he may induce purchasers to believe that the
goods which he is selling are the manufacture of another person.
The classical trinity has been restated in the Reckitt & Colman Products Ltd Case . This
case is important in two respects. First, the House of Lords confirmed that each passing off
case depended on own facts. Secondly, their Lordships reverted to the “classic trinity” for
their definition of the elements of the cause of action. Lord Oliver put the matters that a
successful claimant must prove: “First, he must establish a goodwill or reputation attached
to the goods or services which he supplies in the mind of the purchasing public by
association with the identifying ‘get-up’ (whether it consists simply of a brand name or a
trade description, or the individual features of labelling or packaging) under which his
particular goods or services are offered to the public, such that the get-up is recognised by
the public as distinctive specifically of the plaintiffs goods or services. Secondly, he must
demonstrate a misrepresentation by the defendant to the public (whether or not intentional)
leading or likely to lead the public to belief that the goods or services offered by him are
the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a
quia timet action, that he is likely to suffer damage by reason of erroneous belief

23 Singer Manufacturing Company v. Loong (1880) 18 Ch.D. 395.

24 Thomas Bear & Sons (India’) Ltd v. Pravag Narain AIR 1940 PC 86.
25 Reckitt & Colman Products Ltd v. Borden [1990] R.P.C 341, HL.
 69
engendered by the defendant’s misrepresentation that the source of the defendant’s goods
or services is the same as the source of those offered by the plaintiff.”
2. Extended Definition
The landmark J Bollinger Case created extended passing off, wherein passing off was
succinctly defined as: “a passing off action protects the property right of a trader in his
goodwill and it would appear that each of the plaintiffs’ is entitled to bring an action to
protect such property right, so far as thereby affected.”
It was recognised that one of the instances where passing off is actionable is the extended
form of passing off, where the defendant’s misrepresentation as to the particular quality of
a product or services causes harm to the plaintiff’s goodwill. An example of this is the
Ervin Wamick BY Case , in which the makers of Advocaat sued a manufacturer of a
drink similar but not identical to Advocaat, but which was successfully marketed as
Advocaat. This case is also known as Advocaat case. In this case, the plaintiffs had been
selling a drink called Advocaat in the U.K. since 1911. All Advocaat sold in U.K. was
made in Holland and consisted of eggs, spirit, sugar but no wine. The name Advocaat was
known as that of a drink with recognisable qualities, appearance, taste and strength. The
defendants did not represent their goods as the goods of the plaintiffs. It was held by the
House of Lords that the action was maintainable.
Lord Diplock and Lord Fraser formulated general propositions of the law of passing off to
take account of its “extended form”. Lord Diplock’s formulations were as follows: “My
Lords, Spalding v. Gamage and later cases make it possible to identify five characteristics
which must be present in order to create a valid cause of action for passing off: (1)
misrepresentation (2) made by a trader in the course of trade, (3) to the prospective
customer of his or ultimate consumers of goods or services supplied by him, (4) which is
calculated to injure the business or goodwill of another (in sense that this is a reasonably
foreseeable consequence) and (5) which causes actual damage to a business or goodwill of
a trader by whom the action is brought (or in qua timet action) will probably do so.”
In the aforesaid case, Lord Diplock observed that the plaintiff was required to prove each
of the above mentioned five ingredients in an action of passing off. Lord Fraser has also
formulated five ingredients of the action of passing off which are required to be proved by
the plaintiff in this very case. The said five ingredients formulated by Lord Fraser read as
under:

26 J Bollinger v. The Costa Brava Wine Co Ltd (No 1) [1960] Ch 262 and (No 2) [1961] 1WLR 277:
[1961] RPC 116.
27 Ervin Wamick BV v. J Townend & Sons (Hull Ltd) [1979] AC 731.
 70
(1) that his business consists of, or includes, selling in England a class of goods
to which the particular trade name applies;
(2) that the class of goods is clearly defined, and that in the minds of the public,
or a section of the public, in England, the trade name distinguishes that class from other
similar goods;
(3) that because of the reputation of the goods, there is goodwill attached to the
name;
(4) that he, the plaintiff, as a member of the case of those who sell the goods, is
the owner of goodwill in England which is of substantial value;
(5) that he has suffered, or is likely to suffer, substantial damage to his property
in the goodwill by reason of the defendants selling goods which are falsely described by
the trade name to which the goodwill is attached.
In this case, the House of Lords approved the statement of law laid down by the English
Courts in the J Bollinger Case28 as well as in the later cases, and clearly explained that the
action in passing off would be maintainable where the plaintiff could prove injury to its
business or goodwill which could take a variety of forms even though the defendant was
not passing off its goods as the goods of the plaintiff. It is possible that the defendant
partly states the truth in its label or in the description and partly mixes it up with the
description and devices which are misleading or which are likely to confuse unwary
purchaser of the product. In such a case, the defendant cannot escape the liability of
misrepresentation or actionable wrong of passing off i.e., causing injury to the business
reputation and goodwill of the plaintiffs merely because while describing its product, the
defendant partly states the truth and then mixes up the same with colourable devices,
marks, words or description with which the product has no natural association. The basic
principles of passing off have been refined over the years to protect appellations of origin,
such as Swiss Chocolate in Chocosuisse Union des Fabricants Suisses de Chocolat Case29.
The same has been held of representations about services; and a defendant may also be
liable for passing off one class of plaintiff’s goods as another. His means may consist of
misappropriating the plaintiff’s mark, business name or get up, or he may simply supply
his own goods when he receives an order for the plaintiff’s.30 In all such cases the plaintiff
loses the customer because the latter is misled by the competitor. The seriousness of such a
threat is recognised in legal principle: the action will lie even where the defendant is

28 Supra n. 26.
29 Chocosuisse Union des Fabricants Suisses de Chocolat v. Cadburv Ltd [1999] EWCA Civ 856.
30 Bistitch v. McGarrv [1964] R.P.C. 173.
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innocent; and relief may be granted without proof of actual damage, but simply because of
likelihood of future injury. This carries the passing off further than most other economic
torts.31
The extended form of passing off is used by celebrities as a means of enforcing their
personality rights in common law jurisdictions. Common law jurisdictions (with an
exception of Jamaica) do not recognise personality rights as rights of property.
Accordingly, celebrities whose images or names have been used can successfully sue if
there is a representation that a product or service is being endorsed or sponsored by the
celebrity or that the use of the likeliness of the celebrity was authorised when this is not
tme.
3. Classical Trinity v. Extended Form
In Ervin Wamink Case33. Lord Diplock identified the features which distinguished the
“extended form” of the tort from the classic form: “The features which distinguish it from
all previous cases were (a) that the element in the goodwill of each of the individual
plaintiffs that was represented by his ability to use without deception (in addition) to his
individual house mark) the word ‘Champagne’ to distinguish his wines from sparkling
wines not made by the champenois process from grapes produced by the Champagne
district of France, was not exclusive to himself but was shared with every other shipper of
sparkling wine to England whose wines could satisfy the same condition and (b) that the
class of traders entitled to a proprietary right in ‘the attractive force that brings in custom’
represented the ability without deception to call one’s wines ‘Champagne’ was capable of
continuing expansion, since it might by joined by a future shipper of wine who was able to
satisfy that condition.”34
4. Reverse Passing Off
Reverse passing off takes place where the defendant’s misrepresentation is not that the
goods and/or services are that of the plaintiff but rather where the misrepresentation is that
the plaintiffs goods are that of the defendants. The following judgements passed by the
courts in United Kingdom, United States of America and India will assist jurists, lawyers
and students in understanding the concept of reverse passing off.

31 W.R.Comish- “Intellectual Property” p.533 3rd Edition.

32 http://sociologyindex.com/passing_off_and_trade_mark_law.htm (last visited May 2,2008).
33 Supra n. 27.
34 Supra n. 12 p. 416.
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(a) Definition
Reverse passing off takes place where the defendant’s misrepresentation is not that the
goods and/or services are that of the plaintiff but rather where the misrepresentation is that
the plaintiffs goods are that of the defendants.
Christopher Wadlow in the “Law of Passing off’ Second Edition, at page 330-332 states
on the subject: “The common law was for long ambivalent in its treatment of inverse
passing off but it is now established that inverse passing off is indeed tortuous and that it
can be accommodated within the wider form of passing off recognized since Advocaat.”
Inverse passing off is not, therefore, a nominate tort in its own right but a further example
of an actionable misrepresentation to which the normal principles of passing off apply.35
(b) United Kingdom
The Principle of inverse passing off was first recognised by the Courts of United Kingdom.
The principles of passing off have also been extended by the United Kingdom Courts to
what is sometimes called “reverse passing off’, that is to say where the defendant claims
the claimant’s work as his own.36 In the John Roberts Powers School Inc Case37, it was
held that in reverse passing off, the defendant markets the plaintiffs goods as being the
defendant’s goods. In this case the defendant had misrepresented to her students and
customers that the study notes for self improvement and social development of the plaintiff
were the product of her own efforts. Injunction was granted by the Courts. In many cases
reverse passing off can be explained under the ordinary rules for example where a
defendant may represent that he or she made goods which were in fact made by the
plaintiffs so as to pass off his own business as a branch of the plaintiffs.
In the Samuelson Case38 the plaintiff was the author under the stage name Lawrie Wyle of
a humorous sketch titled “The New Car” which had been performed successfully before
the King and Queen at a Royal Command performance and had attracted favourable
reviews. The defendants retained the principle comedian from the sketch to write and
perform a film version which emerged as totally different from the original. The
defendants used misleading quotations from newspaper reviews of the command
performance to advertise their film as if it was the sketch which had pleased the King and
Queen. They argued that this was not passing off but Lord Hanworth M.R. did not agree.
He observed: “It appears to me idle to say that this is not passing off. What was the

35 V.A. Mohta- “Trademarks Passing off and Franchising” p.682 (2004,1st Edition).
36 Bristol Conservatories Ltd v. Conservatories Custom Built [1989]RPC 455.
37 John Roberts Powers School Inc v. Denvse Bernadette Tessensohn [1995] F.S.R. 947.
38 Samuelson v. Producers Distributing 1931 (48) RPC 580.
 73

purpose of what I have described as a moulding of the observations contained in the Daily
Telegraph? To leave out Lawrie Wylie and refer to “His First Car” and not “The New Car”.
“His First Car” was the title of the film of the defendants and they were adducing its
success as appropriate to and belonging to their film “His First Car” when in truth and in
fact it belonged to the plaintiff and his new sketch “The New Car”. That seems to me to
amount to a notice or invitation; come and see our film and when you have seen our film
you will have seen the sketch which has been spoken of in the manner which is stated in
the passages which appear in the advertisements. It appears to me quite clear that this was
an attempt to pretend that the defendants sketch was the same as the sketch which had
made Her Majesty the Queen laugh.”
In the Plomien Fuel Economiser Company Ltd. Case39 the plaintiffs were manufacturers of
a fuel economiser which had been marketed under the name “Plomien”. The defendants,
who at one time acted as sale agents for the plaintiffs, broke that relationship and started
themselves to market an economiser which was manufactured for them. It was in respect
of their transaction in connection with the marketing of that economiser that the passing
off action was brought. The allegation was that the defendants engaged in a deliberate
attempt to deceive by putting forward their economiser as being the same as the plaintiffs
and represented that certain tests that had been conducted were the tests in connection with
the defendants’ economiser, whereas in fact they were tests in connection with the
plaintiffs’ economiser. They represented that certain economisers which had been fitted
for a number of purchasers and which were in fact the plaintiffs’ economiser, were the
defendants’ economiser. The court explained the principle of reverse passing off as
follows: “It is perfectly true that there is no evidence that a single person who has
purchased the economiser from the defendants had ever heard of the plaintiffs; but in
passing off there is no necessity that the person who is deceived should have known the
name of the person who complains of the passing off. In many cases the name is not
known at all. It is quite sufficient, in my opinion, to constitute passing off in fact, if a
person being minded to obtain goods which are identified in his mind with a definite
commercial source is led by false statements to accept goods coming from a different
commercial source. Now in the present case what was it that the defendants did? They
deliberately induced customers to come to their shop for the purpose of purchasing goods
of the same manufacture as those supplied to the satisfied customers named on the list
which they circulated. That was quite clearly their intention, because otherwise that was

39 Plomien Fuel Economiser Company Ltd, v. National School of Salesmanship Ltd 1943 (60) R.P.C. 219.
 74
the use of circulating that list?” Then the Court further observed: “Having got them in their
shop, what do they do? They do not sell those customers the goods those customers have
come to buy; they sell them goods of their own manufacture, which are quite different, in
the sense that they are not the required manufacturer. If that is not passing off, I do not
know what is. It is perfectly true, and I am willing to assume, that not one single customer
who went to the shop (I use the word ‘shop’ of course metaphorically, it was not a shop at
all; it was done by orders by post and by travellers and so forth.) had ever heard of the
plaintiffs or ever heard that they put on the market an economiser. That, to my mind,
matters not one bit when it is realised that those customers were coming with the intention
of getting goods from a particular source, namely, the same source as those from which the
satisfied customers had got their goods.”
In the Bristol Conservatories Case40 the defendant’s salesman showed prospective
customers an album of photographs of conservatories, some of which were of
conservatories designed and built by the claimant. Although there was no allegation that
anyone looking at the photographs would associate any with the claimant, the Court of
Appeal found that there was a reasonable claim for passing off, because if a customer
ordered a conservatory from the defendant in response to the photographs he would be
supplied with a conservatory not of the stated commercial source but of the defendant’s
manufacture. The court specifically declined to decide whether there is a form of tort
known as “reverse passing off’, preferring to find the facts alleged as within the tort of
passing off.
In the Matthew Gloag Case41 Laddie, J. observed: “The boarder line between reverse
passing off and cases falling outside the tort was difficult to define and the plaintiffs claim
was not bound to fail. They had a particular interest in the words “Scotch Whisky”, which
interest clearly extended to preventing those words from being used on a beverage which
was not Scotch Whisky but which could well extend further to prevent authentic Scotch
Whisky from being used for the purpose of building up or reinforcing a misleading
reputation in a misleading geographical ‘denomination’.”
Notwithstanding the Bristol Conservatories, passing off is not a tort providing a remedy in
all cases of deception: it is submitted that Laddie J. went too far in Matthew Gloag when
he refused the defendant’s application to strike out the claimant’s claim for passing off.
The defendant sold “Welsh Whisky” a product which was, in reality, Scotch whisky
purchased by them in bulk, bottled and then sold. The claimant claimed that this

40 Bristol Conservatories v. Conservatories Custom Build [1989] R.P.C. 455.

41 Matthew Gloag v. Welsh Distilleries [1998] F.S.R. 718.
 75
constituted “reverse passing off5 and relied on Bristol Conservatories. The judge found
that this was arguable. This cannot be right: passing off does not extend to misstatements
in the abstract, it is not a tort covering all misdescriptions of products: there must be
actionable misdescription which harms the claimant’s goodwill in a name or get up, mere
appropriation is not sufficient. Although the defendant’s actions may have contravened
trade descriptions legislation or E.U. regulations, there was no representation connecting
the “Welsh Whisky” product with anyone other than the defendant. This can be contrasted
with Bristol Conservatories where the photographs were equivalent to such a
representation.42
In the British Diabetic Association Case43 both parties were charitable institutions whose
names were deceptively similar. It was held that the words “associations” and “societies”
is too similar in derivation and meaning and, therefore, court granted permanent injunction
on the basis of passing off.
Halsburry’s Law of England, Fourth Edition Vol. 40A para 175 makes the following
observation: “It is not enough that the goods are merely capable of being used by dealers
to perpetuate frauds on their customers; the goods, or leaflets or other material supplied
with them, must be intended or must be of such a nature as to suggest, or readily or easily
lend themselves to such passing off, as otherwise the consequence is too remote to be
attributed to the supplier of goods.”
(c) United States of America
Leading American case on inverse passing off is a decision of United States Supreme
Court in the International News Service Case.44 In that case the plaintiffs (Associated
Press) were a news agency with a monopoly of reports from the Allied Forces in the First
World War. The defendants, a rival news agency reported this news by copying from the
published bulletins of the Associated Press and transmitting the news of their own
subscribers, who published it without acknowledging its original source. No question of
copyright infringement arose, because requirements for registration and notice were not
met. The Supreme Court was split in its decision. For present purposes the most relevant
judgement is that of Justice Holmes with whom Justice Mackenna concurred. He would
have found in the plaintiffs favour solely on the grounds that there had been no
acknowledgement of the source of the news. Holmes, J rejected the idea of a general tort
of misappropriation or unfair competition and based his judgement on an analogy with the

42 Supra n. 12 p.458.
43 British Diabetic Association v. Diabetic Society [1996] F.S.R 1.
44 International News Service v. Associated Press 1918 [1248] US 215.
 76
law of passing off, which still corresponded closely to English common law. He observed:
“The ordinary case is a representation by device, appearance or other indication that the
defendants goods come from the plaintiff. But the only reason why it is actionable to make
such a misrepresentation is that it tends to give the defendant an advantage in business and
it is thought undesirable that an advantage should be gained that way. Apart from that the
defendant may use such unpatented devices and uncopyrighted combination of words as
he likes. The ordinary case, as I say; is palming off the defendants products as the
plaintiffs but the same evil may follow from the opposite falsehood from saying whether
in words or by implication, that the plaintiffs product is the defendants’ and that it seems
to me, is what has happened here. The falsehood is a little more subtle, the injury a little
more indirect, than in ordinary cases of unfair trade, but I think that the principle that
condemns the one condemns the other.”
(d) India
In India the case of reverse passing off was succinctly described by the Division Bench of
Mumbai High Court in the Sheila Mahendra Thakkar Case.45 In this case the Court
evaluated the principles as enunciated by the Courts of United Kingdom and United States
of America. A.P. Shah, J observed: “In our judgement, the principles applied by the
English Courts, are well capable of application to the facts alleged by the respondent here.
In the present case, the appellant is in effect selling the product “Vandevi Powder
(Yellow)” which legitimately belongs to the respondent and to call the said product
“Vandevi Super Fine Powder” is to perpetuate a misrepresentation to the public...First,
there will be a direct loss of business to the respondent. Secondly, there will be damage
caused to the reputation of the respondent’s brand... In our view, as held by Ralph Gibsons,
LJ concept of confusion is irrelevant when the misrepresentation leaves no room for
confusion. Prospective customer here is not left to perceive the difference between the two
products. He is persuaded to buy a product under the name “Vandevi Superfine Powder”
which is in fact a different product i.e. “Vandevi Powder (Yellow)” which belongs to the
respondent. This action on the part of appellant clearly falls within the ambit of tort of
passing off. The concept of tortuous passing off would include the case like the present
one where the appellant is really misrepresenting the qualities which belong exclusively to
the respondent as his own qualities. All the benefits of the qualities which belong to the
respondent are being wrongfully appropriated by the appellant who is using the same to
build up a false reputation of the appellants “Vandevi Superfine Powder”. Such wrongful

45 Sheila Mahendra Thakkar v. Mahesh Naraniii Thakkar 2003 (37) PTC 501 (Bom) (DB).
 77
action on the part of the appellant would certainly cause damage to the goodwill of the
respondent and also mislead the ultimate consumer. All the three elements are required to
satisfy the tests of passing off, namely, (i) reputation and goodwill, (ii) misrepresentation
by the defendant, and (iii) likelihood of damage to the plaintiff has been established.” The
court further observed “it is seen from the decided cases that reverse passing off or inverse
passing off is not a nominate tort in its own right but a further example of actionable
misrepresentation to which normal principles of passing off apply”. The court further
opined... “It is seen from the decided cases that reverse passing off or inverse passing off
is not a nominate tort in its own right but a further example of actionable misrepresentation
to which normal principles of passing off apply.”
C. CONTEMPORARY STATUTORY REFERENCE
The definition of passing off has not been given in the United Kingdom’s Trade Marks Act,
1994, India’s Trade Marks Act, 1999 or United States of America’s the Lanham Act, 1946.
However the action of passing off has been preserved in some sections of the above
mentioned Acts.
1. United Kingdom
Passing off has been preserved in section 2 (2) and referred to in Section 5 (4) (a) of
United Kingdom’s Trademark Act, 1994.
(a) The Trade Mark Act, 1994- Section 2 (2)
Action of passing off is preserved in the present Trade Marks Act, 1994 of U.K. Section 2
(2) of the 1994 Act states that no proceedings lie to prevent or recover damages for
infringement of all unregistered trademark as such; but nothing, in this Act affects the law
relating to passing off.
(b) The Trade Mark Act, 1994- Section 5 (4) (a)
Section 5 (4) (a) of the Trade Mark Act 1994 prevents the registration of a mark whereby
‘its use in the UK is prevented by virtue of law of passing off.
2. United States of America
In United States of America a federal registration reserves to the owner of the mark the
exclusive right to use the mark throughout the United States of America, the owner of an
unregistered “common law” mark can prevent others from using the same or confusingly
similar mark only within the geographical area in which the mark has actually been used.
The standard for finding of infringement-namely, “a likelihood of confusion among the
relevant purchasing public”-is same for both registered and unregistered trademarks. The
Lanham Act, 1946 remains the basic trademark statute in United States of America.
 78
Section 43 (a) of the Lanham Act, 1946 provides a federal cause of action to protect
consumers against unfair competitive business practices.
(a) State Common and Statutory Law
Exclusive rights in trademarks may be enforced whether the marks are registered with the
federal government or state government, and even if they are not registered at all. While
there are certain important substantive and procedural advantages gained by registering
trademarks with the federal government, trademarks and service marks that are distinctive-
that is, marks which are not merely descriptive of the products or services in connection
with which they are used-are protected against infringement by others the moment the
marks are used in connection with goods or services, regardless of whether they are
registered.
The protection afforded to unregistered trademarks, however is limited to geographical
area in which the mark is used. Whereas a federal registration reserves to the owner of the
mark the exclusive right to use the mark throughout the United States of America, the
owner of an unregistered “common law” mark can prevent others from using the same or
confusingly similar mark only within the geographical area in which the mark has actually
been used. The standard for finding of infringement-namely, “a likelihood of confusion
among the relevant purchasing public”-is same for both registered and unregistered
trademarks.
A state trademark registration generally provides a trademark owner with the exclusive
rights to use a mark within that state. The requirements and benefits of state registrations
vary from state to state as they are governed by the state statutory scheme and provide
46
access to state courts
(b) The Lanham Act, 1946 - Section 43 (a)
The present trademark legislation is the federal trademark act of 1946, known as the
Lanham Act, codified at 15 U.S.C. §§ 1051-27. The Lanham Act remains the basic
trademark statute today, though it has been amended since 1946 on several occasions.
Section 43 of the Lanham Act (15 U.S.C. § 1125) provides a federal cause of action to
protect consumers against unfair competitive business practices. It is effectively a national
unfair competition statute prohibiting a broad range of wrongful business activities and
providing a wide array of remedies to the plaintiffs. While patent and copyright law find
explicit authority in the constitution, there is no similar express constitutional authority for
federal trademark protection. Instead, the authority behind the federal protection for

46 Michael A. Epstein- “Epstein on Intellectual Property” pp.7-8 (2008,5th Edition).

 79

trademarks is based on the “commerce clause.” While state common law and statutory law
is one basic source of protection for trademark, the Lanham Act provides a system of
federal registration for trademark rights and for the administration of the system by the
Patent and Trademark Office (the “PTO”). The benefits of federal registration under the
Lanham Act include nationwide protection of trademarks, access to the federal courts, and
constructive notice of trademark protection. In addition to protection against trademark
infringement, the Lanham Act provides a federal unfair competition law by prohibiting the
marketing of goods and services in deceptive ways.

Actions for infringements of trademarks can be brought under section 32 of the Lanham

Act, which provides protection for federally registered marks, and under section 43 (a),
which provides protection for both registered and unregistered marks, as well as trade
names and service marks. The language of section 43 (a) covers a broad range of unfair
and deceptive marketing practices. It affords not only trademark protection, but trade dress

protection, protection against “palming” or “passing off’ and protection against false or
misleading advertising as well.47

Section 43 (a) reads:

Any person who, in connection with any goods or services, or any container for goods,

uses in commerce any work, term, name, symbol, or device, or any combination thereof,
or any false designation of origin, false or misleading description of fact or misleading

representation of fact, which

1. is likely to cause confusion, or to cause mistake, or deceive as to the affiliation,

connection, or association of such person with another person, or as to the origin,

sponsorship, or approval of his or her goods, services, or commercial activities by another

person, or

2. in commercial advertisements or promotion, misrepresents the nature,

characteristics, qualities or geographical origin of his or her or another person’s goods,

services or commercial activities, shall be liable in a civil action by any person who
believes that he or she is likely to be damaged by such Act.
The substantive rights afforded to owners of unregistered trademark owners under section

43 (a) of the Lanham Act is often denominated as an action for “unfair competition” and
are coextensive with those available to owners of registered trademark who can bring a

trademark infringement action under section 32 of the Lanham Act. In 1995, Congress
created a federal cause of action for dilution of trademarks, codified in section 43 (c).

47 Ibid.
 80
Similarly section 43 (d) against cyber squatting are available to protect registered and
unregistered trademarks alike. In fact most of the claims dominated as “unfair
competition” are in fact actions for infringement of unregistered trademarks brought under
section 43 (a) of the Lanham Act and these actions are frequently referred to as actions for
“unfair competition” or “infringement of unregistered trademarks” or “common law
trademark infringement”. Section 43 (a) is the principle provision of the Lanham Act
designed to protect against acts of unfair competition.
3. India
Passing off is not defined in the Indian Trademark Act, 1999. It is referred to in section 27
(2), 134 (1) (c) and 135 (3) (c). The Act is silent about the cases of passing off where no
goods or no trademark is involved. Such cases of passing off are also governed by
common law.48 It is a common law remedy and an action of passing off is maintainable
under the general law of the land. There is no definition of the expression “passing off’ in
the Trade Marks Act 1999 or in the predecessor enactment, though the expression “passing
off’ is used in the below mentioned sections49:
(a) The Trade Mark Act. 1999-Section 27 (2)
This section states that the right of action against any person for passing off goods or
services as the goods of another person or as services provided by another person or the
remedies in respect thereof are unaffected by the provisions of the Act.
(b) The Trade Mark Act, 1999- Section 134 W (c)
This section refers to jurisdictions of courts to try suits for passing off arising out of use of
any trademark. In this section, the right of a trade mark owner is recognised by entitling
him to file a suit or an action of passing off arising out of use by the defendant of any
trademark which is identical with or deceptively similar to the plaintiffs trademark in any
court not inferior to a district court having jurisdiction to try the suit.
(c) The Trade Mark Act. 1999- Section 135 (31 (cl
This sub section sets out the circumstances in a passing off suit where the court shall not
grant relief by way of damages or on account of profit.
E. DEFINITION OF PASSING OFF AS EVOLVED BY CASE LAW
Passing off is a judge made law. The definition of passing off has been refined over the
years by judges in all the three countries of United Kingdom, United States of America
and India. The following judgements given by various courts in United Kingdom, United

48 Supra n. 3 p.686.
49 K.C Kailasam and Ramu Vedaraman- “Law of Trade Marks & Geographical Indications” p.301
(2003).
 81
States of America and India will assist jurists, lawyers and Students in understanding the
definition of passing off.
1. United Kingdom
The passing off action was first developed to meet a classic case. Lord Halsbury put it
succinctly in the Reddawav (Frank-) & Co. Case50: “nobody has any right to represent his
goods as the goods of somebody else.” This was a landmark case, deciding that the use by
a trader of a term which accurately described the composition of his own goods might
nevertheless amount to the tort of passing off, if that term was understood in the market in
which the goods were sold to denote the goods of a rival trader. The case did not however
extend the nature of the particular kind of misrepresentation which gives rise to passing off
action beyond what Lord Diplock called “the classic form of misrepresenting one’s own
goods as the goods of someone else.” This definition is significantly different one from
that given half a century earlier by Lord Langdale in an earlier Perry Case51, wherein he
observed: “A man is not to sell his own goods under the pretence that they are the goods of
another man; he cannot be permitted to practice such a deception nor to use the means
which contribute to that end. He cannot, therefore, be allowed to use names, marks, letters
or other indicia, by which he may induce purchasers to believe that the goods which he is
selling are the manufacture of another person.”
An extension of the passing off tort, and a satisfactory definition and theoretical basis for
the action, was provided by Lord Parker in the A.G. Spalding & Bros Case52 wherein Lord
Parker has defined the law of passing off as: “The basis of passing off action being a false
representation by the defendant, it must be proved in each case as a fact that the false
representation was made. It may, of course, have been made in express words, but the
cases of express misrepresentation of this sort are rare. The common case is where the
representation is implied in the use or imitation of a mark, trade name or get up with which
the goods of another are associated in the mind of the public, or of a particular class of the
public. In such cases the point to be decided is whether, having regard to all the
circumstances of the case, the use by the defendant in connection with the goods of the
mark, name or get up in question impliedly represents such goods to be the goods of the
plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes
put, whether the defendant’s use of such mark, name or get up is calculated to deceive. It
would, however, be impossible to enumerate or classify all the possible ways in which a

50 Reddawav (Frank) & Co. v. George Banham & Co. Ltd AC 199: 13 RPC 218 [1896],
51 Perry v. Truefitt 49 ER 749 (1842).
52 A.G. Spalding & Bros v. A.W. Gamage Ltd 32 R.P.C 273 (1915).
 82
man may make the false representation relied on.” It was the speech of Lord Parker which
gave passing off its modem basis. In the speech which was approved by the other
members of the House, he identified the right which is the subject of passing off action. He
stated the right as being “the property in business or goodwill likely to be injured by the
misrepresentation.”
With passing off now recognised as protecting property, the need for fraud was easily
abandoned and passing off became the only strict liability common law economic tort.
Predatory business practices and piracy of business rights are denounced by commercial
morality. So does law. Confusing customers as to the source, is an invasion of another’s
property rights. The unfairness arises from the fact that the purchasing public are likely to
be mislead. The protection is afforded not for the deceived customer but the rival trader. It
is to prevent “dishonest trading”, to use a phrase of Danckwers J in the J Bollinger Case.53
In the Radio Corporation Case54 it has been held that “the wrongful appropriation of
another’s professional or business reputation is an injury in itself’. The action of passing
off is essentially a cause of action arising out of confusion55
In the Plomein Fuel Economiser Case56, it has been held that the plaintiff is identified by
his personal name or some trade name or mark. If a person minded to obtain vendible
goods which are identified in his mind with certain definite commercial source is led by
false statement to accept goods coming from a different commercial source the tort is
established.
2. United States of America
Section 43 (a) of the Lanham Act which has been termed as the federal unfair competition
law protects against confusion or the likelihood of confusion as to the source, sponsorship,
or association between the goods and services of competitors in the marketplace. This
section has been given broad interpretation by the courts and is considered to “confer
protection against a myriad of deceptive commercial practices,” the two most common
being false designation of origin or source (trademark or trade dress infringement”) and
false description or representation (“false advertising”)57

53 Supra n. 26.
54 Radio Corporation v. Hederson [1969] R.P.C. 218.
55 Serville v. Constance [1954]R.P.C. 146.
56 Supra n. 39.
57 Resource Developers. Inc, v. Statute of Liberty Ellis Island Found. Inc F. 2d 134, 139 (2d Cir.
1991).
 83
In the RJ. Toomv Co. Case58 the defendant company was found to have violated Section
43 (a) where it used the plaintiffs well known but unregistered trademark “Toomy” on a
line of apparel that directly competed with the plaintiffs line of apparel. It was held that
trademarks, trade names, and service marks are protected against misuse and infringement
under section 43 (a) regardless of whether they have been registered.
It has been held that trademarks that are registered or used in foreign countries but not
registered or used in United States will usually not be afforded the same degree of
protection under section 43 (a) as marks that are used domestically, even if they are
internationally recognizable.
In the Vuitton et Fils. S.A. Case59 it was held that the protection afforded to trademarks
under section 43 (a) is broader than the protection afforded by section 32, as section 43 (a)
protects competitors “against all forms of misdescription of products and services in
commerce.”
The trademarks law, both in letter and spirit, is laid upon the premise that, while it
encourages fair trade in every way and aims to foster and not to hamper, competition, no
one, especially a trader, is justified in damaging or jeopardizing another’s business by
fraud, deceit, trickery or unfair methods of any sort. This necessarily precludes the trading
by one dealer upon the good name and reputation built up by another.60
There is a considerable overlap in the theories used by the injured parties to protect their
business property interests against deception and fraud, and the same act may give rise to
several cause of action. Thus, a misleading advertisement may constitute passing off, false
advertising and product disparagement. For example, the Fifth Circuit of Appeals held in
1998 that a tavern’s unauthorised use of the name “The Velvet Elvis” constituted
trademark infringement, unfair competition, trademark dilution and violation of right of
publicity.61
In the Shaver Case62 it was held that while suits for infringement of trademarks rests on
the ownership of the trademark, suits for unfair competition are usually founded upon the
damage to the trade of the complainant by the fraudulent passing off the goods of one
manufacturer or dealer for those of another. In the Menendez Case63 it was held that the
intentional use of another’s trademark is a fraud.

58 R.J. Toomv Co. v. Toomv 683 F. Supp. 873 (D. Mass. 1988).
59 Vuitton et Fils. S.A. v. Crown Handbags 492 F.Sudp. 1071,1077 (S.D.N.Y 1979).
60 Baltimore v. Moses 59 US PQ 409 Para 16.02.
61 Elvis Presley Ent. Inc v. Canece 141 F3d 188 (5th Circuit 1998).
62 Shaver v. Heller & M. Co fCA8t 108 F 821.
63 Menendez v. Holt 128 US 514, 32 L Ed 526, 9 S Ct 143.
 84
In the Westward Coach Mfg, Co. Case 64 it was held that the owner of a trademark or trade
name is entitled to protection against the adoption and use by a competitor of the same or
similar mark or name. In the H.P. Hood & Sons. Inc Case65 it was held that relief may be
granted against one who markets goods with an unprivileged imitation of the physical
appearance of another’s goods.
In the Ross-Whitney Corn Case66 it was held that unfair competition may consist in the
enabling of the buyer of a product to palm it off as the product of another by virtue of a
common shape or other distinctive feature.
In the L.E. Waterman Co Case67 it was held that where a producer or tradesman has
adopted a particular dress, design, or combination of features, producing a peculiar visual
appearance for the purpose of presenting his goods to the market, which, at the time of its
adoption, was not in use by anyone else, he is entitled to be protected in its use as against
any other person who has imitated it in such a way as to mislead the public.
/Q

In the Winfield Case it has been held that in a proper case, unfair competition, as by
violation of rights in a trade name may be enjoined, and, if injury to plaintiffs business is
threatened or imminent because of unfair competition by defendant, the court is authorized
to intervene to prevent its occurrence.
In the American Shops Case69it has been held that injunctive relief is not confined to
protection of those having trademarks and trade names, but reaches beyond to encompass
all cases in which it is evident that fraud and deception are practiced by one in disparaging
or capturing the trade of a competitor.
In the Beecham Case70 it has been held that the basis of the intervention of a court of
equity and the granting of injunctive relief to restrain unfair competition is subterfuge,
piracy, wrongdoing, or unfair tactics of the competitor.
In the Bulova Watch Co Case71 it has been held that the doctrine under which the courts
will grant relief does not necessarily involve unfair competition in the sale of goods, but
the unfair appropriation and use of a competitors mark, with the intention to profit in the
sale of goods of a related character.

64 Westward Coach Mfg. Co. v. Ford Motor Co (CA7 Ind) 388 F2d 627.
65 H.P. Hood & Sons. Inc v. Whiting Milk Co 345 Mass 287,186, NE 2d 904.
66 Ross-Whitnev Corp v. Smith Kline & French Laboratories (CA9 Cal) 207 F2d 190.
67 L.E. Waterman Co v. Modem Pen Co 235 US 88,59 L Ed 142,35 S Ct 91.
68 Winfield v. Charles 175 P 2d 69,77 Cal.App.2d 64.
69 American Shops v. American Fashion Shops of Journal Square 80 A.2d 575, 13 N.J. Super.416.
70 Beecham v. London Gramophone Corp 104, N.Y.S.2d 473.
71 Bulova Watch Co. v. Stolzberg D.C. Mass 69 F.Supp.543.
 85
• 79
In the American Radio Stores Case it was held that damage to sales is not the only
injury which courts will consider in determining whether an injunction should be granted
restraining from using a name which confuses its identity with another as a person is
entitled to be free from the possible danger to his reputation and credit which would result
by the publics confusion of the identity of the persons.
In the Pecheur Lozenge Co. Case73 it was held that local law should be applied by a
federal court in a suit for damages and an injunction restraining trademark infringement
and unfair competition, where, by reason of the fact that the only registration of the
plaintiffs label is under the copyright law and no cause of action under the copyright law
is alleged, the only possible cause of action which the record supports is for unfair
competition and common law trademark infringement.
In the Steele Case74 it was held that the Lanham Act, making actionable the deceptive use
of trademarks in foreign and interstate commerce, does not constrict prior law or deprive
courts of jurisdiction previously exercised. The Lanham Act does not provide a right of
action for trademark infringement generally, leaving to state law those cases for common
law trademark infringement that that do not arise out of deceptive and misleading use of
such marks in interstate and foreign commerce, but provides a right of action to persons
engaged in interstate and foreign commerce against deceptive and misleading use of words,
names, symbols, or devices, or the combination thereof, which have been adopted by a
manufacturer or merchant to identify his goods and distinguish them from those
manufactured by others, where such misleading use is carried on in the channels of
interstate and foreign commerce subject to regulation by Congress.
3. India
In the Star Industrial Company Limited Case75, the Privy Council has defined the tort of
passing off as being the invasion of a right of property in goodwill or business and that
goodwill cannot exist independently of a business.”
Passing off was defined in the Durga Datt Sharma Case76 as: “An action of passing off is
a common law remedy being in substance an action for deceit, that is, passing off by a
person of his own goods as those of another”. It is one of the ways whereby the goods of
one trader are sold by another in a manner calculated to deceive the purchaser into

72 American Radio Stores v. American Radio & Television Stores Corporation 150 A.180, 17 Del.Ch.
127.
73 Pecheur Lozenge Co. v. National Candy Co 315 US 666, 86 L Ed 1103, 62 S Ct 853.
74 Steele v. Bulova Watch Co 344 US 280, 97 L Ed 319, 73 S Ct 252.
75 Star Industrial Company Limited v. Yap Knee Kor (1976) RPC 256 (PC).
76 Durga Datt Sharma v. Nav Rattan Pharmaceutical Laboratories AIR 1965 SC 980.
 86
*77 7ft
thinking that they are the goods of the former. In the Honda Motors Co. Ltd. Case ,
passing off has been held that the action in passing off is an actionable wrong where a
person passes off his goods as the goods of another.
The action for passing off is a common law remedy and the gist is deceit and not
infringement of a right of the exclusive owner. This has been held so by the Supreme
Court in the Kavirai Pandit Durga Datt Sharma Case79 wherein the Supreme Court has
observed: “While an action of passing off is a common law remedy being in substance an
action for deceit, that is passing off by a person of his own goods as those of another, that
is not the gist of an action of infringement. The action for infringement is a statutory
remedy conferred on the registered proprietor of a registered trademark for the vindication
of the exclusive right to the use of the trademark in relation to those goods. The use by the
defendant of the trademark of the plaintiff is not essential in an action for passing off, but
is the sine-qua-non in the case of an action of infringement”
Passing off was also a subject matter of a suit in the case before Mumbai High Court as
reported in the Consolidated Food Corporation Case.80 It was observed by Shah, J in the
said case: “It is sufficient if the article with the mark upon it has actually become a
vendible article in the market with intent on the part of the proprietor to continue its
production and sale. It is not necessary that the goods should have acquired a reputation
for quality under that mark. Actual use of mark under circumstances as showing an
intention to adopt and use it as a trademark is the test rather the extent and duration of the
use.”
A Division Bench of Delhi High Court in the Century Traders Case81 held that in passing
off cases the true basis of action is that the passing off by the defendant of his goods as the
goods of the plaintiff injures the right of property in the plaintiff, that right of property
being his right to the goodwill of his business. This right is to be protected and the balance
of convenience is in favour of the person who has established a prima facie right to
property.
In considering a given case for an action of passing off, one of the essential test is whether
there is reasonable probability that the use of the name adopted by the defendant was
likely to mislead the customers of the plaintiffs by reason of similarity of the two trade
names.

77 Ando Indian Drue and Chemical Co. v. Swastika Mills Co. Ltd AIR 1935 Bom 101.
78 Honda Motors Co. Ltd, v. Chraniit Singh & Ors 2003 (26) PTC 1.
79 Supra n. 76.
80 Consolidated Food Corporation v. Brandon & Co. Pvt. Ltd AIR 1965 Bom 35.
81 Century Traders v. Roshanlal Duggar & Co. AIR 1978 Del 250.
 87
This test was suggested as one of the tests in the M/s Victory Transport Co. Pvt. Ltd.
Ghaziabad Case.82 In this case it was held that this element of confusion is essential and its
tendency to mislead or confuse is the essence of action of passing off’.
The Division Bench of Allahabad High Court has in the Priva Rubber and Plastic
Industries Case83 defined passing off as: “Thus the crux of an action for passing off is that
the defendants are selling goods so marked as to be designed or calculated to lead the
customers to believe those are the plaintiffs goods. The defendant is not entitled to
represent his goods as the goods of the plaintiff.. .the onus in a passing off action lies on
the plaintiff to establish the existence of the business reputation or goodwill in the relevant
mark which he seeks to protect and is likely to suffer on account of passing off.”
In the Sir Shadi Lai Enterprises Ltd Case84, the Delhi High Court expressed that the
purpose of passing off action was not only to protect the commercial goodwill but also
ensure that the purchasers were not exploited and dishonest trading was prevented. The
court observed as follows: “the trite proposition of law is that the test to be applied in such
matters is as to whether a man of average intelligence and imperfect recollection would be
confused. An unwary purchaser is not expected to keep the goods of two manufacturers or
the labels side by side and compare the similarities and dissimilarities thereon
meticulously to decide whether he is purchasing the same goods which he intended to buy.
Deception can be caused by user of one or more essential features of a mark and degree of
resemblance necessary to deceive or cause confusion could not be defined and the question
to be asked by the court to itself is as to whether the customers of average intelligence and
imperfect recollection are likely to be confused on the first impression”.
In the M/s Mayor Brothers Case85. D.P. Wadhwa, J defined passing off in following terms:
“It is said that an action for passing off is a common law remedy being in substance an
action for deceit, that is, a passing off by a person of his own goods as those of another. In
a passing off action the issue is: is the defendant selling goods so marked as to designed
and calculated to lead purchasers to believe that they are plaintiffs goods? Actual
deception is not required to be proved, but reasonable ground for apprehending the
deception must exist. Thus in a passing off action a person is not entitled to represent his
goods as the goods of another but it is not necessary for that other person to prove that the
former did this knowingly or with any intent to deceive. It is enough for the plaintiff to

82 M/s Victory Transport Co. Pvt. Ltd. Ghaziabad v. District Judge. Ghaziabad.AIR 1981 Allahabad 421.
83 Priva Rubber and Plastic Industries v. Bairangbali Industries PTC (Suppl) (1) 337 (All) (DB).
84 Sir Shadi Lai Enterprises Ltd v. Kesar Enterprises Ltd 1998 PTC 309 (DCC).
85 M/s Mayor Brothers v. Viiav Industries 1985 PTC 208 Del.
 88
prove that his device mark has become distinctive of his goods and that there is probability
of confusion between his goods and the goods of the defendants. No case or actual
deception nor actual damage need be proved.”
Mr. A. Banetji, J in the Bata India Limited Case86 observed: “It is well settled that the
‘passing off is not based on a registered trademark but is an action to pass off goods as its
own while it belongs to another person. Section 27 (2) of the Act lays down that the
provisions of the Act will not affect rights of action against any person for passing off
goods as the goods of another person or remedies in respect thereof. ‘Passing off is also
referred in section 105 (c) and section 106 of the Act. The former refers to jurisdiction of
Courts to try suits for passing off arising out of the use of any trademark. The latter
specifies the remedies available in respect of passing off arising from the use of the
trademark. It will, therefore, be evident that the Act does not specify anything on the
question of passing off where no trademark is involved. Actions relating to passing off are
thus, governed by common law. Section 27 (2) of the Act lays down that the Act does not
affect the right of action relating to passing off goods. It may also be noticed that the
expression ‘passing off has not been defined in the Act.”
In this case Mr. A. Banerji, J has further held “The concept of passing off action has come
to this country from England. It is a form of tort. Halsbury in the laws of England, Third
Edition, Vol 38 para 995 has this to say:
“995. Nature of legal right. Although, apart from the statute there is no property in a
name or mark as such, it is a principle of law that no trader has any right to represent his
goods as the goods of somebody else. As a corollary to this, no trader, who has in his
hands the goods of a second trader, or his goods of a particular class or quality, has a right
to represent those goods to be the goods of a third trader or of the second trader but of a
different quality or belonging to different class.....
An action based on the foregoing principle namely, an action based on passing off, lies, it
seems, only where there is a tangible possibility of damages to some business or trading
activity. It is not, however, necessary to prove an actual passing off of goods, the plaintiff
being entitled to nominal damages if no actual damage is proved.
This right is a right of property, the property being, it seems, in the business or goodwill
likely to be injured by passing off.”
The concept of passing off has undergone changes. At the outset, it was based on
representation that the goods were being marketed as the goods of another. Subsequently,

86 Bata India Limited v. Pverelal & Co 1986 (10) IPLR 385.

 89
the concept has been extended to the profession and non-trading where such activities
caused damage or injury to the goodwill associated with the activities of another person.”
Mr. A. Baneqi has further observed: “The classic definition of ‘passing off is contained in
the case of Singer Manufacturing Co. v. Loong (1880) 18 Ch. D. 395 that ‘no man is
entitled to represent his goods as the goods of another man’; and no man is permitted to
use any mark, sign or symbol, device or other means, whereby, without making a direct
false representation himself to a purchaser who purchases from him he enables such
purchaser to tell a lie or to make a false representation to somebody else who is the
ultimate customer.” He then cited the case of Perry v. Truefitt (1842) 6 Beav 66 where
Lord Langdale observed: “A man is not to sell his own goods under the pretence that they
are the goods of another man: he cannot be permitted to practice such a deception nor to
use the means which contribute to that end. He cannot, therefore be allowed to use names,
marks, letters or other indicia, by which he may induce purchasers to believe that the
goods which he is selling are the manufacture of another person”. Mr. A. Banerji, J has
finally observed: “These observations give a clear indication that an action of passing off
is, therefore, an actionable wrong where a person passes off his goods as the goods of
another.”
In the M/s Tinna Enterprises Private Ltd. Case it has been observed: “it is a well settled
law that the gist of a passing off action is that party A is not entitled to represent his goods
as the goods of party B, but it is not necessary for party B to prove that party A did this
knowingly or with any intent to deceive. It is enough that the get-up of B’s goods has
become distinctive of them and there is a probability of confusion between them and the
goods of A. No case of actual deception or any actual damage needs to be proved, in such
like cases.”
It has been held in the K.K. Jain & Bros. Case88 by Mr. Mahesh Chandera, J “Even though
expression ‘passing off has been used in sections 27 (2), 105 (c) and 106 (2) (c) of the
Trade and Merchandise Marks Act, 1958 it has nowhere been defined in the Act. Action
for passing off is a common law remedy under the tort and as such it can be safely
concluded that the term ‘passing off has been borrowed from the English Common Law.
Although the words ‘passing off appears to have been used in Or Ewing & Co. v. Jojnston
& Co 13 Ch. D. 434, but the expression ‘passing off appears to have been employed for
the first time in The Singer Manufacturing Company v. Herman Loong 1882 (8) Appeal
cases 15. Originally the action for passing off was restricted to cases of representation of

87 M/s Tinna Enterprises Private Ltd, v. M/s International Rubber Industries 1986 PTC 121.
88 K.K. Jain & Bros, v. Paras Enterprises 1987 (11) IPLR 163.
 90
one person’s goods as those of another, but later on came to be extended first to business
and services and thereafter to professions and non-trading activities, with the result that on
date it is available in many forms of unfair trading and unfair competition where activities
of one person cause damage or injury to the goods well associated with the activities of
another person or group of persons. .... ‘passing off can be broadly described as the act of
a deceitful trader in manufacturing, marketing or selling his goods, which bear
resemblance and similar get up in shape, design, mask, mark or packing etc. as goods
manufactured, marketed or sold by another trader who has been manufacturing, marketing
or selling his goods with same shape, design, mask, mark or packing for a considerable
period. It is a tort committed by one trader who enters the field later against another who
has been in that trade for reasonably long period to the exclusion of others and who has
earned a right to protection against all others in respect of his products due to
exclusiveness of not only the quality but the brand name as well. The vital element in the
case of passing off is the probability of deception which may depend upon a number of
facts, e.g., similarity of marks, or get up or packing or name or labels or container or a
device or even a fancy word. The basic hypothesis of passing off is that nobody has any
right to represent his goods as the goods of somebody else and a trader cannot be allowed
to use names, marks, letters or other indicia by which he may induce purchasers to believe
that the goods which he is selling are the manufacture of another person and it would be an
actionable wrong to do so”
In the National Garments Case89. K.P. Radhakrishna Menon, J succinctly defined passing
off as: “the plaintiff in an action for passing off therefore has to establish that his products
have derived from the advertising a distinctive character recognised in the market. Plainly
stated the principle of law is that nobody has any right to represent his goods as the goods
of somebody else and sell it in the market for his own aggrandisement. This rule has been
treated as a special instance carved out of the general rule that any misrepresentation
calculated to give one trader the benefit of another’s goodwill is actionable. Generally
stated any misrepresentation calculated to injure another in his trade or business can be
regarded as passing off (see Burberry’s v. Cording [1909] 26 RPC 693). Nonetheless in an
action for passing off, a plaintiff need not prove any malice unlike the plaintiff in a
tortuous action for injurious falsehood. Likewise proof of damage as such is not essential
to enable the plaintiff to maintain an action for passing off. Why it is said so is that the
confusion brought about by the actions of the defendant puts the plaintiff s goodwill at risk.

89 National Garments v. National Apparels 1990 PTC 98.

*
 91
To put it briefly the plaintiff in an action for passing off must show, if not that he has some
sort of business which is threatened by the defendant’s activities, at least that his interest is
something akin to that of the owner of the business (see Kean v. McGiven (1982)FSR
119.”
In the M/s Daffodils Perfumes & Chemicals Industries Case90. R.C. Lahoti, J defined
passing off as: “The underlying principle of passing off is to protect reputation and
goodwill of the plaintiff in his business which also amounts to property of the plaintiff.
Honest business practice is that no one shall be permitted to or attempt to take advantage
of another’s goodwill and reputation.”
The tort of passing off has been defined in the Kirloskar Diesel Recon (P) Ltd v. Kirloskar
Proprietary Ltd Case91 by S.M. Jhunjhunwala, J in following terms: “The law of passing
off protects goodwill against its erosion by use of identical or similar trading name or
mark.” The exclusive reputation of trading name is protected and prevented from being
debased.”
J.D. Kapoor, J in the K.E. Burgman A/S Case92 has defined passing off as: “in a nutshell,
action of passing off arises not from infringement of a registered trademark. It is available
to a trader who has a long, prior and continuous use of the trademark and has established
goodwill and reputation. Any person who uses an identical or near similar or deceptively
similar mark at later point of time creating confusion as to its source or origin renders
himself liable for action for passing off. Injustice would be done if such a person is
permitted to use the impugned trademark.”
The tort of passing off has been exhaustively dealt with in the Scotch Whisky Association
no
Case. The Court observed: “It is necessary to make a brief reference to the well settled
propositions of law governing actions for passing off in its extended form. In paragraph
16.02 of Kerly’s Law of trade Marks and Trade Names, 12th Edition, “Passing off’ is
defined as “an actionable wrong for the defendant to represent, for trading purposes, that
his goods are those or that his business is that of the plaintiffs...” Thus the essence of the
cause of action for passing off in its classic form consists of misrepresentation by the
defendant in respect of goods marketed by the defendant by colourable imitation and using
labels or badges resembling those of others in such manner as to be calculated to cause the
goods to be taken by the ordinary purchasers for the goods of the plaintiff. “The law on

90 M/s Daffodils Perfumes & Chemicals Industries v. Daffodils Chemical (P) Ltd 1996 PTC (16) 153
Del.
91 Kirloskar Diesel Recon (PI Ltd v. Kirloskar Proprietary Ltd 1997 PTC (17) 469.
92 K.E. Burgman A/S v. H.N. Shah 2001 (2) CTMR 456.
93 Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana Ltd AIR 1992 Bom 294.
 92
this matter is designed to protect traders against that form of unfair competition which
consists in acquiring for oneself, by means of false or misleading devices, the benefit of
the reputation already achieved by rival traders.” Salmond and Heuston “The law of Torts”,
19th Edition, page 450, explains the law on the subject in the terms aforesaid. Winfield
and Jolowics have in their latest book on the “Tort” (13 Edition) clearly explained, at
page 537, the extended concept of the Tort of passing off, in the following words
“Although the classic form of the tort is one trader representing his goods as those of
someone else, the basis of the liability is wider; it is the injury to the plaintiffs business
goodwill ‘the benefit and advantage of the good name, reputation and connection of a
business... .the attractive force that brings in the custom.”
In the Naeeswar Rao Case94, it has been observed: “A man has a right of property in the
goodwill of his business, which he has either built up or acquired. If any one interferes
with that by passing off his goods, the remedy available to him by way of injunction to
retrain the passing off even if the person so passing off is entirely innocent and acts in
ignorance of the fact that he is interfering with the rights of another. If passing off is done
fraudulently, then the owner of the trademark or goodwill can either ask for an account of
profits made by the person passing off his goods in that way or for damages.”
Passing off has been defined in the Lloyd Insulations (India) Limited Case95 by Mohd
Shamim, J in following terms: “the term passing off has nowhere been defined under the
Trade and Merchandise Marks Act though we find references to the same in sections 27
(2), 105 (c) and 106 of the Act. Thus it is a common law remedy and an action for passing
off is maintainable under the general law of the land. Defendant is said to be passing off
his goods as that of the plaintiff when he parades them under a trade name/mark or trading
style which is similar to that of the plaintiff and thereby the unwary public is mislead and
confused to treat the goods of the defendant as that of the plaintiff. I am tempted here to
reproduce here the words of the eminent jurist Mr. Salmond used by him in connection
with an action of passing off (page 401, Chapter 18). According to him, “the gist of
conception of passing off is that the goods are in effect telling a falsehood about
themselves, are saying something about themselves which is calculated to mislead. The
law on this matter is designed to protect traders against that form of unfair competition
which consists in acquiring oneself by means of false or misleading devices, the benefit of
the reputation already achieved by rival traders.”

94 Naeeswar Rao v. Ram Bahadur 14 Mysore LJ 1.

95 Llovd Insulations ('India') Limited v. Puni Llovd Insulations Pvt, Ltd 1999 PTC (19) 449.
 93
Passing off has been defined by the Supreme Court of India in the case of Satyam Infoway
Limited v. Sifynet Solutions Pvt. Ltd96 in the following terms: . .An action of passing off,
as the phrase ‘passing off itself suggests, is to restrain the defendant from passing off its
goods or services to the public as that of the plaintiffs. It is an action not only to preserve
the reputation of the plaintiff but also to safeguard the public. The defendant must have
sold its goods or offered its services in a manner which has deceived or would be likely to
deceive the public into thinking that the defendant’s goods or services are the plaintiffs.
The action is normally available to the owner of a distinctive trademark and the person
who, if the word or name is an invented one, invents and uses it. If two trade rivals claim
to have individually invented the same mark, then the trader who is able to establish prior
user will succeed. The question is, as has been aptly put, who gets there first? It is not
essential for the plaintiff to prove long user to establish reputation in a passing off action.
It would depend on the volume of sales and extent of advertisement.”
In the Koninkliike Philips Electronics NY Case97 it has been observed: “An action for
passing off was recognised at common law based on the prior user of a trademark by the
plaintiff to prevent its imitation or misuse by the defendants. The law thus recognised a
trademark as a valuable right even before the statutes on the subject did so. The legal
position in regard to the availability of the right by reason of prior user or the remedies
open to the party, who has made such use, has not undergone any material change
enactment of specific provisions notwithstanding. These provisions no doubt provide for
registrations of trademarks and recognise the rights of the owner thereof to use the same
but what is significant is that mere registration does not in itself prevent a prior user from
restraining use of his trademark by any other person including one who may have got the
same registered in his name. Two crucial questions therefore, arise in all cases of passing
off. These are: (i) whether the trademark in dispute has been in use by the plaintiff prior in
point of time, and (ii) whether the trademark being used by the defendants is identical or
deceptively similar to the one used by the plaintiff so as to create any confusion in the
mind of the consumer public.” The Court further went on to define the tort of passing off
by observing “The essence of the action in passing off lies in the need to maintain
commercial honesty. No trader can use a trademark to market his goods by creating a
deception or confusion in the mind of the consumer with ordinary memory and power of
recall. The court may while examining the prayer for injunction also keep in mind whether
the defendants had any particular reason for adopting a trademark which is phonetically or

96 Satvam Infowav Limited v. Sifynet Solutions Pvt. Ltd 2004 (28) PTC 566 (SC).
97 Koninkliike Philips Electronics NY v. Smt. Kanta Arora 2005 (30) PTC 589 (Del).
 94
otherwise identical or deceptively similar to that of the plaintiff. In the absence of any such
reason, it may draw an inference that the use or creation of a trademark so similar as to
create deception in the mind of the consumer was actually intended to benefit from the
goodwill and reputation of the party who had used such a mark prior in point of time.”
It has been observed in the Jolen Inc Case98: “Further, it is also well established that a
trader who is able to build up reputation and goodwill in his business is entitled to prevent
passing off action whether or not he has got registration in respect of the name or the mark
used by him in relation to his business. Passing off action is an action to protect the
reputation and goodwill of a trader and it is true that a rival trader can use the name, mark
or the get-up of the original trader provided it should not lead to deception.”
Mr. Avadh Behari, J has exhaustively dealt with the concept of passing off in the B.K.
Engineering Co. Case." He prefaced his judgement with the following statement: “It is in
the interest of fair trading and in the interest of all who may wish to buy and sell goods the
law recognises that certain limitations upon freedom of actions are necessary and desirable.
In some situations the law has had to resolve what might at first appear as to be conflict
between competing rights. In solving the problems which have arisen there has been no
need to resort to any absence principles but rather, I think, to the straightforward principle
that trading must not only be honest but must not even unintentionally be unfair.” He went
on to hold that: “The law on this matter is designed to protect traders against the form of
unfair competition which consists in acquiring for oneself, by means of false and
misleading devices the benefit of the reputation already achieved by rival trader. The
defendant seeks to acquire this benefit by passing off his goods as and for the goods of the
plaintiff.” Mr. Avadh Behari, J further held that: “The setting of the law of passing off is
competition between traders........What a judge has to decide in a passing off action is
whether the public at large is likely to be deceived. What would be the effect of the
representation upon the prospective purchaser? Instances of actual deception may be
useful as examples, and evidences of persons experienced in the ways of purchasers of a
particular class of goods will assist the judge. But his decision does not depend solely or
even primarily on the evaluation of such evidence. The court must in the end trust to its
own perception in the mind of a reasonable man.” He further went on to hold: “....A
message is conveyed by a memorable mark or name to the purchasing public that the
goods are of the plaintiff. So the potential purchaser is mislead and deceived if there is
misappropriation of name, symbol or slogan of the competitor An action of passing off

98 Jolen Inc v. Shobanlal Jain & Ors 2005 (30) PTC 385 Mad DB.
" B.K. Engineering Co. v. Ubhi Enterprises ('Reed') 1985 PTC 1.
 95
lies if one trader represents his business as being that of or connected with that of, the
plaintiff, as is the case here. There is a false suggestion by one competing trader in the
same line of business that his business is connected with that of the other. This, I
apprehend, would damage the reputation and thus the goodwill of the plaintiffs business.”
An unauthorised use of the name can lead to injury in various ways. It is not necessary that
the defendant directly takes business from the plaintiff, for it seems that a professional
man or professional association have a cause of action in respect of unauthorised use of
their names in a manner likely to cause harm to their professional activities, for example,
the use of a medical man’s name to promote a quack medicine. In this form the tort is less
passing off than “injurious association”100
In an action of passing off, the plaintiff must prove the user of the mark prior in point of
time than the impugned user by the defendant. The registration of the mark prior in point
of time to the user by the plaintiff is not relevant in an action of passing off. It there is
likelihood of the offending trademark invading the proprietary right, a case of temporary
injunction is made out.101
In the Bata India Ltd Case102 it has been observed: “It is well settled that ‘Passing off is
not based on a registered trademark but is an action to pass off goods as its own while it
belongs to another person. S. 27 (2) of the Act lays down that the provisions of the Act
will not affect rights of action against any person for passing off goods as the goods of
another person or the remedies in respect thereof. ‘Passing off5 is referred in S. 105 (c) and
S. 106 of the Act. The former refers to the jurisdictions of Courts to try suits for passing
off arising out of the use of any trademark. The latter specifies the remedies available in
respect of passing off arising from the use of a trademark. It will, therefore, be evident that
the Act does not specify anything on the question of passing off where no trademark is
involved. Actions relating to passing off are thus governed by common law. Sec 27 (2) of
the Act lays down that the Act does not affect the rights of action relating to passing off
goods. It may also be noticed that the expression ‘passing off has not been defined in the
Act.
An action based on the foregoing principle namely an action based on passing off, lies, it
seems, only where there is tangible possibility of damage to some business or trading
activity. It is not, however, necessary to prove an actual passing off of goods, the plaintiff
being entitled to nominal damages if no actual damage is proved.

100 Winfield and Dolowiez- “Tort” p. 549 (1984,12th Edition).

101 Raiendra Sahoo v. Ganeswar Swain AIR 1987 Ori 156.
102 Supra n. 86.
 96
This right is a right of property, the property being, it seems, in the business or goodwill
likely to be injured by passing off’.
The concept of passing off has undergone changes. At the outset, it was based on
representation that the goods were being marketed as the goods of another. Subsequently,
the concept has been extended to profession and non trading activities and at present it is
applicable to various forms of unfair trading
E. REVIEW
Passing off is a common law tort which is used to enforce unregistered trademark rights.
Passing off usually occurs where the reputation of party A is misappropriated of party A.
The law of passing off prevents one person from misrepresenting his or her goods or
services as being the goods and services of the plaintiff, and also prevents one person from
holding out his or her goods or services as having some association or connection with the
plaintiff when this is not true. This is done by adopting a similar or identical name, by
copying the design of the plaintiff, the get up or trade dress and packaging.
Passing off is taking business of competitor by presenting goods or services as someone
else’s and is actionable at common law. The tort is known as passing off in the United
Kingdom and India and palming off in United States. The usual remedies are injunctions,
delivery up of offending articles and inquiries as to damages and accounts of profits. There
is also an international obligation to assure effective protection against unfair competition
under article lObis of the Paris Convention. The law of passing off is designed to prevent
the misrepresentation to the public which shows some kind of misrepresentation between
the plaintiff and the defendant. Passing off occurs when the defendant holds out his or her
goods or services as having some association or connection with the plaintiff when this is
not factually true.
Passing off is a judge made law. The law started with the elements of the claimant’s mark
having goodwill, misrepresentation made by the defendant (whether or not intentional)
leading or likely to lead the public to believe that the goods or services offered by the
defendant are the goods or services of the plaintiff and the plaintiff has suffered damages.
This tort of passing off has two forms i.e. the classical trinity and the extended form. In the
classical form the plaintiff must show that there is goodwill attached to the mark of the
plaintiff, the defendant has made misrepresentation and damage has accrued or is likely to
accrue due to the misrepresentation of the defendant. Then there is the extended form of
passing off which has been refined over the years to protect appellations of origin. The
extended form has been typified in the Champaign, Sherry and the Advocaat cases. In
 97
extended passing off, the defendant’s misrepresentation as to the particular quality of a
product or service causes harm to the plaintiffs goods or services. There is even the
concept of reverse passing off, that is to say where the defendant claims the plaintiffs
goods and services as his own. The action of passing off is diverse and has altered many
times to reflect commercial changes.
The tort of Passing off originally protected trade names as badges of origin. It gave
remedy against a trader who deceived the plaintiff trader’s customers into believing that
his goods are the plaintiffs goods. To succeed in an action for passing off, the plaintiff
had to prove three elements. Firstly that the plaintiff possesses goodwill, secondly that
there is misrepresentation by the defendant that is likely to deceive the public and thirdly
that the plaintiff has suffered, or is likely to suffer damages as a result of misrepresentation.
Over time protection was extended beyond protection of a badge of origin. Traders could
now prevent their rivals from imputing a connection between their products by use of a
name, mark or get up. Traditionally the courts were careful not to extend protection to
descriptive or geographical terms. In the landmark case of J Bollinger v The Costa Brava
Wine Co Ltd (No 1) and (No 2) (Spanish Champagne) extended passing off was created.
This enabled a class of traders to prevent rivals from incorrectly applying descriptive terms.
Other cases about products made in geographical areas followed, for example the Spanish
Sherry case and Scotch Blended Whisky case. In of Erven Wamink v J Townsend & Sons
(Hull) Ltd (Advocaat case)104 the House of Lords prevented the incorrect application of the
descriptive term ‘Advocaat’ which was associated with specific ingredients rather than
geographical location.
As can be seen then, it is essential to the requirement of passing off that there be
misrepresentation, damage and goodwill. The state of mind of the defendant is of no
relevance to the defendant’s liability.
It is important both in the evaluation of the facts and in the formulation and the application
of law, never to lose sight of the legal and economic basis of the action for passing off.
The tort has been developed for the protection of the property which exists not in a
particular name, mark or style, but in an established business, commercial or professional
reputation or goodwill. Those terms embrace the enjoyment of custom and business
connection, popularity and good name, and, indeed, all that attracts favour and business to
a particular concern and to the goods and services it supplies. That form of property may
be damaged in a number of ways by a wide variety of factual misrepresentation.

103 Supra n. 26.

104 Supra n. 27.
 98
Intellectual property right owners do need to be able to exploit their property and need do
this free of unfair market practices. The tort of passing off prevents this exploitation by
stopping others from passing off their goods and services as having come from the
plaintiff by misrepresentation indicial of the plaintiffs’ reputation thus protecting
plaintiffs’ goodwill. The provision for registered trade marks provide an additional or
alternative statutory remedy where a trade mark has been registered. Such protection is
concurred with other intellectual property protection but may also significantly outlast.
There is much overlap between the laws relating to trademarks, designs and copyright, but
passing off fills any gaps that occur. There is no limit to the list of situations to which
passing off applies, and such recent developments have been in the areas of character
merchandising and product endorsement.
Passing off is of many varieties. With every day improvement in the technology of the
trade, infinite varieties of passing off can spring up. Internet, radio, television, newspaper,
advertisements and various other means have added a new dimension to this tort. The crux
of the matter is not the intention of the defendant in taking a certain name but the likely
effect of such action on the minds of the public. However, innocent may be the intention,
the action will be passing off in case a consumer is likely to be mislead. The setting of law
of passing off is a result of competition between the traders. This branch of law is ever
expanding.105
An action of passing off enables traders to prevent their rivals from deceiving consumers
that there is a connection between their products. The protection is based on the plaintiffs
property which is the goodwill connected with the mark, name or get up rather than the
mark, name or get up itself. Goodwill has been defined by Lord Macnaghten as: “the
benefit and advantage of the good name, reputation and connection of a business...the
attractive force which brings in custom”106
Passing off is said to be a species of unfair trade competition or actionable unfair trading
by which one person, through deception, attempts to obtain an economic benefit of the
reputation, which the other has established for himself in a particular trade or business.
The gist of the conception of passing off is that the goods are in effect telling a falsehood
about themselves, are saying something about themselves, which is calculated to mislead.
The law on this matter is designed to protect traders against that form of unfair
competition, which consists in acquiring for oneself, by means of false or misleading
devices, the benefit of the reputation already achieved by rival traders.

105 Supra n. 35.

106 IRC v. Muller & Co’s Margarine Ltd [1901] AC 217.
 99
Actions alleging passing off are often brought when a case of trademark infringement does
not lie. For example, a business owner may not be able to secure trademark protection for
his or her business name because the name is primarily a surname or it is so descriptive it
does not qualify for protection as a trademark. The use of similar name by another party in
connection with similar products and services that causes confusion and deception may
thus be remedied by bringing action alleging that the second party is passing off his or her
goods as those of the plaintiff. Passing off may be enjoined and damages may be awarded
to compensate the plaintiff for damages suffered, including lost profits. Passing off is the
earliest form of unfair competition, and the term is used to describe a wide variety of
deceptive trade practices. Passing off can occur when a party suggests that its products or
services are somehow associated with or sponsored by another.
Within the action of for passing off there are accommodated and adjusted three sets of
interests. There is the plaintiffs interest in protecting his skill, effort and investment, the
interest of the defendant in freedom to attract purchasers for his goods or services, and the
interest of consumers in having available a range of competitive goods and services for
selection by consumers without the practice upon them of misrepresentation.
Section 2 (1) (zb) defines “trade mark” in relation to Chapter XII, to mean a registered
trade mark or a mark used in relation to goods or services for the purpose of indicating or
so as to indicate a connection in the course of trade between the goods or services, as the
case may be, and some person having the right as proprietor to use the mark, etc. In other
words, as far as India is concerned, an unregistered trademark is placed on the same
footing as a registered trademark in India in respect of trademark offences, penalties, and
procedures and in respect of all civil actions as contemplated in section 134 and 135, apart
from the specific provision in section 27 (2) for obtaining civil remedies on the basis of an
action of passing off. Similarly in United States of America and United Kingdom
unregistered or common law trademarks are given protection from usurpation by
unscrupulous traders.
Passing off has in essence two functions, these are the protection of the trader against the
unfair competition of his rivals, and the protection of consumers who would otherwise be
confused as to the origins or nature of the goods or services, which are offered. As
copyright protects creativity and patents protect invention, passing off protects the
acquired reputation; the result of prolonged human efforts.