Intellectual Property Law

Passing Off

Definition

Passing off is a tort (common law or statutory) that protects the goodwill of a business by preventing another from misrepresenting their goods or services as those of the claimant. It is available even without a registered trademark, making it a key remedy for unregistered marks and trade dress.

Key elements

1Goodwill — the claimant has established goodwill or reputation in the relevant market
2Misrepresentation — the defendant made a false representation (express or implied) that their goods/services are those of the claimant or associated with them
3Damage — the misrepresentation caused or is likely to cause damage to the claimant's goodwill

How this applies across jurisdictions

India

Section 27 of the Trade Marks Act 1999 preserves the common law action of passing off. Indian courts apply the classical trinity: goodwill, misrepresentation, and damage. Passing off can be combined with infringement actions. Unregistered well-known marks receive protection.

UK

Reckitt & Colman Products Ltd v Borden Inc [1990] (the 'Jif Lemon' case) confirmed the classic trinity. UK courts also recognise 'extended' passing off for collective quality (e.g., Advocaat). The Misrepresentation must deceive — mere confusion is insufficient.

Australia

Tort of passing off and misleading/deceptive conduct under Australian Consumer Law (ACL) Section 18 overlap in protecting goodwill.

Frequently asked questions

Can I bring a passing off action without a registered trademark?

Yes. Passing off protects unregistered rights. You need to establish goodwill (not mere reputation — Starbucks (HK) Ltd v British Sky Broadcasting [2015]) and that the defendant's conduct is likely to mislead consumers.

What is the difference between passing off and trademark infringement?

Trademark infringement requires a registered mark. Passing off does not — it protects common law goodwill. Passing off requires proving goodwill and damage; infringement (under statutory law) has a presumption of validity once registered. Both remedies can be pursued together.

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