PASSING OFF UNDER INTELLECTUAL PROPERTY RIGHTS LAWS OF INDIA.

PASSING OFF UNDER INTELLECTUAL PROPERTY RIGHTS LAWS OF INDIA.

I. Introduction

The doctrine of passing off occupies a central position within the broader framework of Intellectual Property Rights in India. Although not expressly codified under a specific statute, the remedy has been judicially recognised as a common-law action, intended to protect the commercial goodwill of a trader against misrepresentation resulting in confusion among consumers. Passing off thus functions as a protective mechanism to ensure that no person, through dishonest conduct or colourable imitation, misappropriates the reputation and economic value built by another in the course of trade.

II. Conceptual Foundations of Passing Off

Passing off rests upon the fundamental principle that “no man is entitled to carry on his business in such a way as to represent that his goods are the goods of another.” The gravamen of the action is misrepresentation, whether intentional or otherwise, that is likely to cause deception among the purchasing public. Unlike statutory trademark infringement under the Trade Marks Act, 1999—which is confined to registered marks—passing off safeguards the goodwill associated with unregistered trademarks, trade names, trade dress, get-up, layout and other indicia of commercial identity.

Indian jurisprudence consistently treats passing off as an action in substance, not merely in form. It is not the exclusive right over a mark that is protected, but rather the economic value of reputation—an intangible but legally enforceable interest.

III. Essential Ingredients: The Classic Trinity

The celebrated judgment in Reckitt & Colman Products Ltd. v. Borden Inc. (the “Jif Lemon” case) articulated the three-fold test for establishing passing off, commonly referred to as the Classic Trinity. This formulation has been repeatedly adopted by Indian courts, including the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. - 2001 (3) TMI 928 - Supreme Court, making it the settled legal position. The three elements are:

1. Goodwill of the plaintiff:
   The plaintiff must show that the mark, trade dress or other indicia relied upon has acquired a distinct commercial identity associated in the minds of consumers with the plaintiffs goods or services.
2. Misrepresentation by the defendant:
   The defendant must be shown to have made a representation—whether express or implied—calculated to lead or likely to lead the public to believe that his goods are those of the plaintiff.
3. Damage to the plaintiff’s goodwill:
   Actual damage need not always be proved; likelihood of damage or dilution of reputation is sufficient. The law recognises that deception itself is injurious to business integrity.

IV. Judicial Evolution in India

Indian courts have developed a well-structured jurisprudence around passing off. Some important principles that have crystallised are:

1. Priority of Use over Registration

The Supreme Court has repeatedly held that prior user prevails over subsequent registration. In passing-off actions, even an unregistered user may restrain a registered proprietor if the latter’s adoption is dishonest or likely to cause confusion.

2. Test of Likelihood of Confusion

The Court in Cadila laid down that the test is not of exact similarity but overall structural, phonetic and visual resemblance, evaluated from the standpoint of an average consumer with imperfect recollection. This test applies equally to names, labels, packaging and trade dress.

3. Trade Dress and Overall Get-up

Passing off is no longer confined to words or logos. Shape of goods, colour schemes, packaging, layout and artistic get-up also receive protection if they have acquired distinctiveness.

4. Misrepresentation Need Not Be Intentional

Dishonesty is an aggravating factor but not a mandatory element. The legal enquiry centres on the effect of the defendant’s conduct, not merely his intention.

5. Protection Against Dilution and Tarnishment

Even in absence of direct competition, courts have granted injunctions where the defendant’s use is likely to erode the distinctiveness or reputation of the plaintiff’s trade identity.

V. Practical Illustration for Clarity

To illustrate the working of the doctrine, consider the following example:

A manufacturer of premium herbal soaps has marketed its product for over a decade under the brand name “VERDANT HERBALS”, using a distinctive green-gold packaging with a stylised leaf emblem. Over the years, the brand acquires reputation and goodwill in the organic personal-care market.

A new entrant launches soap under the name “VERDENE HERBAL”, adopting a near-identical colour scheme, packaging layout, font style and leaf illustration. Consumers in retail outlets begin to assume a connection between the two products.

In such circumstances, the established manufacturer has a strong cause of action for passing off. The goodwill in his brand is demonstrable; the defendant’s packaging and naming create an impression of association; and the likelihood of damage—both in terms of diverted sales and dilution of brand identity is evident. Courts in India would typically grant a prohibitory injunction at the interlocutory stage itself.

VI. Distinction Between Passing Off and Statutory Infringement

Although both remedies aim to prevent marketplace confusion, their legal foundations differ:

VII. Remedies Available

Courts may grant a range of civil reliefs in passing-off actions:

• Permanent and interim injunctions restraining further misuse
• Damages or an account of profits
• Delivery-up and destruction of infringing goods
• Appointment of Local Commissioner for seizure of infringing materials
• Orders for disclosure of sales records to determine profits

Courts have been particularly vigilant in preventing colourable imitations in pharmaceuticals, food products and FMCG sectors due to heightened public interest concerns.

VIII. Conclusion

The law of passing off in India, though rooted in common-law equity, has attained a well-settled and sophisticated character. It remains a vital remedy for the protection of business reputation, especially in a marketplace increasingly driven by brand identity and consumer perception. The judiciary has consistently upheld the principle that commercial goodwill is a proprietary interest deserving of robust protection against dishonest encroachment. Passing off thus continues to be an indispensable instrument in the broader matrix of Intellectual Property Rights jurisprudence in India.

***