Authors: Anand Patel, Senior Associate
Introduction
The legal doctrine of Passing Off, historically propounded in the British colonial era rooted in the common law tradition, has seen significant evolution over the decades. In the Indian Intellectual Property framework, the relevance of passing off has resurfaced with renewed force of judicial interpretations that reflect the growing complexities of modern commerce. As businesses adopt sophisticated branding strategies that go beyond mere use of logos and words. Misrepresentation, once confined to mimicry of trademarks has taken on multifaceted forms, such as trade dress imitation, design piracy, and cross-sector goodwill exploitation. These realities necessitate a re-examination of the scope of passing off under the domain of Indian Intellectual Property Rights.
Passing Off
The doctrine dates back to 1842 when Lord Langdale in the case of Perry v. Truefitt1 rightly propounded, “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 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 principle of Passing off, under the Indian jurisprudence, is a remedy protecting registered as well as unregistered trademarks, preventing unfair competition, ensuring retribution and prohibiting unlawful use of original proprietor’s mark. When a person offers his products or services under a deceptively similar mark to an existing trademark it can cause the likelihood of confusion among the consumers and dilute the distinctiveness of the original trademark. Such Passing Off of the counterfeit and inferior goods or services causes undue harm to the goodwill and reputation of the original proprietor’s marks and results in unfair and unlawful gains at the hands of the person committing such an act of passing off.
1 Perry v Truefitt (1842) 6 Beav 66, 49 E.R. 749
A person is said to commit the act of passing off when the threefold test established in the landmark case of Reckitt & Colman Products Ltd v Borden Inc2 commonly referred to as the “Classic Trinity” is satisfied. The test requires the presence of three essential elements: goodwill, misrepresentation, and damage. The Indian courts have consistently adopted and applied this framework in determining passing off actions.
Statutory Recognition and Judicial Trends
The Trademarks Act, 1999, Section 27(2) explicitly preserves the common law remedy of passing off by stating that “nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person”. This statutory recognition underscores the doctrine’s independent standing of the registration requirements by the act.
The Designs Act, 2000 does not expressly incorporate passing off, courts have held that trade dress elements such as shape, configuration, and packaging if they have acquired secondary meaning can be protected under passing off even if the design registration has lapsed or is unavailable. The Indian courts have provided a wider scope of protection to designs discussed later in the article.
The matters that are copyrightable under Section 13 of the Copyright Act, 1957, are the most prone to misrepresentation, a party can deceptively appropriate artistic works, literary elements, or packaging get-up that are not merely original but also associated in the minds of consumers with a particular source, as under the act protection is only granted to an expression but not the idea (campbell v. acuff rose3) and fair use concept under section 52 make the protection more difficult.
Application of the doctrine in the ambit of Patent Act, 1970 is far fetched as the law aims to protect the technicalities, specifications and process of a product. It focuses on the earlier stages of product and service, namely the production phase and requires mandatory registration. It is important to understand the relevance of each law and at what stage the protection is codified by the relevant law under which the claim is subjected.
The Geographical Indications of Goods (Registration and Protection) Act, 1999, provides a sui generis regime for the protection of geographical names linked to products of distinct origin, the courts have recognized that misuse of GIs could also constitute passing off, especially in cases where unregistered GIs or associated trade indicia have acquired substantial goodwill.
These interrelations affirm that passing off is not a siloed doctrine limited to trademarks but is part of a wider legal framework to prevent unfair competition. The Indian judiciary has progressively acknowledged this expansive interpretation to protect innovation, creativity, and business reputation core tenets of intellectual property law.
2 Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873
3 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
A right embedded in International Jurisprudence
Internationally, the World Intellectual Property Organization (WIPO) has recognized the protection against unfair competition, including passing off, as a fundamental principle of intellectual property. Article 10bis of the Paris Convention for the Protection of Industrial Property, administered by WIPO, mandates member states to provide effective protection against acts of unfair competition. WIPO’s model provisions and commentary explicitly acknowledge that passing off is intrinsically linked to safeguarding goodwill and reputation, forming a cornerstone in the broader framework of IP rights globally recognized.
Goodwill v Infringement: Clarifying the Doctrinal Divide.
A fundamental and thin line of distinction exists between goodwill and infringement. Infringement refers to the violation of a statutory right granted under trademark, design, copyright, patent and other IP laws for which the original proprietor can resort to the judicial proceedings on the grounds of violation. By contrast, goodwill is an intangible property representing the commercial reputation of a product or business, which by majority reason is acquired by distinctiveness of the shape, mark, color, design, etc. of the product or service protected the right of passing off and not infringement right. Such acquired goodwill is not limited to the territorial boundaries, however, the Supreme Court in Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd4 clarified that goodwill must be established in the jurisdiction where protection is sought.
It is pertinent to note that not all cases of goodwill are given blanket immunity and protection under the right of passing off, in the same regard a reference can be made to the landmark case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)5 where the Supreme Court of India dealt with a dispute involving two pharmaceutical companies marketing anti-malarial drugs under the names “Falcigo” and “Falcitab”. Both drugs were prescription-only and sold exclusively to hospitals, not over the counter to the consumers. The plaintiff claimed that the deceptive similarity in the names could cause confusion, amounting to passing off and directly affecting the goodwill of “Falcigo” within the distribution chain. The court ruled in the favor of “Falcitab” emphasizing that even deceptively similar goods may not always constitute passing off, it depends on the facts and circumstances of the case and the likelihood of confusion among the relevant class of purchasers.
4 AIR 2018 SC 167
5 2001 (2) PTC 541 (SC)
Widening the scope of protection under passing off:
The Indian Judiciary has time and again laid down the importance of passing off but each and every interpretation finds its essence embedded in the facts and circumstances of the case rather than just a liberal understanding of the right.
Breaking the normative boundariesandsettling the debate on the scope of protection under the right of passing off The Delhi High Court’s recent ruling in M/s Crocs Inc. USA v M/s Bata India Ltd & Ors marks a watershed moment in the jurisprudence surrounding trade dress protection in India. The Court was again dealt with the complex question of whether a passing off claim is maintainable for a registered design, that has also acquired the attributes of trade dress, as the design law only provides for infringement rights.The Court reviewed the precedents of Carlsberg Breweries v Som Distilleries6 and Mohan Lal v Sona Paint and Hardwares7 clarified that registration under the Designs Act does not exclude the possibility of asserting passing off claims. The earlier stance that pursuing both design registration and a passing off action amounted to double-dipping was dismissed and held that a registered design, if proven to have attained source significance i.e., consumers associate the design with the originator may also attract protection under the passing off doctrine, where different suits are sin quo non to claim both. The Court stated:”Where the configuration or shape of a product serves as an indicator of source, its misappropriation through visual imitation can form the basis of a passing off claim, notwithstanding its registration under the Designs Act”.
6 AIR 2019 DELHI 23
7 AIR 2013 DELHI 143
The expanding interface between passing off and design law has, however, also given rise to certain doctrinal concerns. This is evident from the recent Harpic v. Spic dispute (Calcutta High Court, 2026), where the Court was faced with the question of whether the distinctive shape of a product, traditionally protected under design law, can continue to receive protection through passing off after it enters the public domain. The case brings out the tension between the limited statutory protection available under the Designs Act, 2000 and the potentially wider protection based on goodwill under passing off. While courts have recognized that product shape and packaging may acquire source significance and be protected as trade dress, the decision indicates that the extent of such protection remains uncertain, particularly where passing off is invoked to claim exclusivity over features no longer protected under design law.
Furthermore, the Court recognized the concept of trade dress as including not just the product’s shape but also its overall presentation, color schemes, textures, and other visual cues. The decision aligns Indian jurisprudence with international standards, particularly in the US and UK, where trade dress enjoys statutory and common law protection. The ruling clarified that the statutory remedy under the Designs Act does not preclude a common law action where consumer deception and misrepresentation are evident. The Court also underscored that trade dress, as a composite of goodwill, deserves protection even without statutory registration.
In the realm of digitalization, there exists non-traditional ways of passing off as well. One of the relevant cases of such non-traditional ways recognized by the Indian Jurisprudence, WIPO, ICANN is copying of domain name. In the case of Yahoo! Inc. v. Akash Arora & Anr.8, the issue of whether the use of the domain name “yahooindia.com” by the defendant amounted to passing off and trademark infringement of the globally reputed mark “Yahoo!” was settled by the Delhi High Court by ruling that domain names are entitled to trademark protection when they carry commercial goodwill. The Court observed that the defendant’s domain was deceptively similar and likely to cause confusion among users on digital search engines and granted an injunction, restraining the defendant from using the infringing domain name, thereby making this a landmark precedent in Indian cybersquatting law, digital trademark protection and passing off claims.
8 1999 SCC OnLine Del 133
An important contemporary development in passing off jurisprudence is the emergence of “reverse passing off”, where a party misrepresents another’s goods or services as its own by removing or suppressing the original source identifiers. The Delhi High Court in Western Digital Technologies Inc. v. Geonix International Pvt. Ltd. (2024) granted an ex parte ad interim injunction on a prima facie finding of such conduct, where refurbished hard disk drives bearing the plaintiff’s mark were stripped of branding and sold under the defendant’s label, thereby severing the link between the product and its true origin. Subsequent judicial analysis has examined such practices through Section 30(4) of the Trade Marks Act, 1999, treating removal of the original mark as “impairment” sufficient to defeat the defense of exhaustion. While Indian courts have thus engaged with fact situations akin to reverse passing off, the concept has not yet crystallized into a distinct doctrinal category and continues to be addressed within the broader framework of misrepresentation and unfair competition.
Envisioning towards a coherent legal future:
In light of recent judicial developments and changing commercial practices, a question arises whether the scope of passing off should be legislatively clarified and harmonised across Indian IP statutes to expressly include trade dress, get-up, and other source-identifying features, even in the absence of registration. At the same time, an overly broad application of the doctrine may have a chilling effect on competition and innovation. If passing off protection is extended too far, it risks creating monopolies based on similarities in visual appearance, phonetic structure, or overall commercial impression concepts which are not strictly defined by statute but are interpreted by courts on a case-by-case basis.
An alignment of Indian IP laws with each other to address the inclusivity of the right of passing off as well as with international best practices, inclusion of new definitions among these laws to define passing off and providing brand owners with a coherent legal framework is a pressing necessity for protecting the Goodwill and Reputation that is always prone to exploitation as in the essence of common law the right available to all irrespective of the fact of them being not a registered proprietor under the law.
Conclusion
The Indian legal system is witnessing an important transition in its understanding and application of the passing off doctrine. With evolving market practices, traditional notions of misrepresentation are being stretched beyond their original limits. Trade dress, shape marks, domain names, and even interior decor are increasingly seen as capable of representing source and acquiring goodwill. The Crocs v Bata decision exemplifies this evolution.
Passing off as a remedy is thus not static; it is rooted in equitable principles that adapt to the commercial realities of each case. This flexibility is what makes passing off indispensable to modern IP laws.
Anand Patel, Senior Associate, Solomon & Co.
About Solomon & Co.
Solomon & Co. (Advocates & Solicitors) was founded in 1909 and is amongst India’s oldest law-firms. The Firm is a full-service firm that provides legal service to Indian and international companies and high net-worth individuals on all aspects of Indian law.
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