Introduction
Synopsis
In the present time, marketing, the brand identity is important. People buy products they recognize. A brand includes a logo, name, slogan, or even packaging. But what happens when someone copies that brand? That’s where passing off becomes useful.
Passing off is a legal action. It protects brands without registered trademarks. This post explains the concept of passing off. It covers Indian and U.S. laws. It uses simple language. It is designed for law students, business learners, and IP beginners.
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What is Passing Off?
Passing off protects businesses from brand misuse. If someone copies your business look or name, you can sue. You don’t need a registered trademark. What you need is reputation. That’s called goodwill. The goal of passing off is to prevent customer confusion. If someone copies your brand and misleads buyers, that is passing off.
Example: A soft drink company becomes popular. Another company uses a similar bottle and name. Customers think both drinks are from the same brand. The first company can file a passing off case.
Key Elements of Passing Off
To win a passing off case, three elements are needed:
- Goodwill – Your brand must have recognition in the market.
- Misrepresentation – The other party is copying your branding.
- Damage – This act is harming your business, financially or otherwise.
Courts in India and the USA follow this rule. All three elements must be proven.
Passing Off Under Indian Law
India protects passing off through the Trademark Act, 1999. Section 27(2) allows a business to sue for passing off even without registration. Section 134 says where the suit can be filed. Section 135 provides remedies like damages and injunctions.
Important case:
Cadbury India Ltd. v. Neeraj Food Products
Cadbury sued for a copied chocolate wrapper. The design was not fully registered. But Cadbury won by proving goodwill. Courts look at brand recognition. They also check if customers are likely to be confused.
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Passing Off Under U.S. Law
In the USA, the Lanham Act applies. Section 43(a) protects brands that are not registered. The law stops businesses from misrepresenting their products. If someone uses your brand to sell their product, you can sue.
Key elements:
- The brand has meaning in the market.
- The copied brand is confusing customers.
- The original brand is being harmed.
Case example:
Two Pesos v. Taco Cabana
Taco Cabana sued for copying restaurant décor. The court said it was passing off. It protected the overall look, even without registration.
Passing Off vs Trademark Infringement
Passing off and trademark infringement are different.
| Topic | Passing Off | Trademark Infringement |
| Protection | For unregistered marks | For registered trademarks |
| Law type | Common law | Statutory law |
| Proof needed | Goodwill, confusion, damage | Unauthorized use |
| Key law | Section 27 (India), 43(a) (USA) | Full Trademark Act |
Passing off gives protection based on reputation. Infringement needs registration.
Why Is Passing Off Still Relevant?
Many small businesses don’t register trademarks. But they still need protection. That’s where passing off helps. In today’s world, copying is easy. Brands can go viral online. Competitors can quickly imitate logos or phrases.
Example: An Indian food blogger had a catchy slogan. A food delivery app copied it. She sued under passing off. The court valued her social media followers as goodwill.
Famous Indian Passing Off Cases
- Dabur India Ltd. v. Colgate Palmolive (India) – Dabur won for similar packaging.
- Kirloskar Diesel Recon v. Kirloskar Proprietary – The brand name was family-owned. The court protected it.
- S. Syed Mohideen v. P. Sulochana Bai – Even a religious book title was protected from misuse.
These cases show passing off works even beyond products. It can include services and religious materials.
Steps to Prove Passing Off in Court
- Collect proof of goodwill – Use reviews, sales data, media coverage.
- Show the copied product – Provide photos, website links, product samples.
- Prove confusion – Survey consumers. Get statements.
- Show loss – Show drop in profits or public trust.
Students preparing for moots or internships can use this as a checklist.
International Use of Passing Off
Many countries use passing off. It is common in the UK, Australia, and Canada. They follow similar rules.The UK protects brand look and packaging. This is called trade dress.Passing off works even when laws are different. Courts protect fairness in branding globally.
Digital Challenges to Passing Off
In the digital world, passing off has new challenges:
- Fake websites with brand names
- Social media handles using your logo
- Apps that look like well-known platforms
Indian law uses the IT Act and updated Trademark Rules (2021) to help.In the U.S., platforms like YouTube and Amazon allow takedown notices.
Why Students Should Learn Passing Off
Passing off is part of IP law. It teaches how reputation has legal value. It connects law with business. Students in law, marketing, and media can all benefit. It also shows how the law is used even without formal registration.
Conclusion
Passing off protects businesses without registered trademarks. It stops others from copying your branding and confusing customers. India protects it through Section 27(2) of the Trademark Act, 1999. The USA protects it through Section 43(a) of the Lanham Act.
To prove it, show goodwill, confusion, and damage. The courts value honesty. They want customers to get the right product from the real source. Even in the age of the internet, passing off is strong. Whether it’s a physical shop or an online brand, reputation matters. Learning about passing off helps students understand the law in action. It shows that law is not only about paperwork. It’s about real people, trust, and business.
Bibliography
- The Trademarks Act, 1999 (India)
- Lanham Act, 15 U.S.C. § 1125 (USA)
- Cadbury India Ltd. v. Neeraj Food Products, 2007 (35) PTC 95 (Del)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)
- Dabur India Ltd. v. Colgate Palmolive (India) Ltd., 2005 (30) PTC 401 (Del)
- Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149
- S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683
- IT Act, 2000 and Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021
- UK Trade Marks Act, 1994 (for comparative reference)
- WIPO: “Passing Off” Guidelines and International Practice
