Table of contents
- What is Passing Off in Trademark Law?
- Key Concepts in Passing Off
- Example of Passing Off Case in India – ⚖️
- Types of Passing Off
- Difference Between Passing Off and Trademark Infringement
- Why is Passing Off Important?
- The Role of the Trademark Journal in Brand Protection
- Legal Procedure for Filing a Passing Off Suit
- When to Choose Passing Off vs Registration
- Best Practices to Avoid Being Accused of Passing Off
- Conclusion
- Frequently Asked Questions (FAQs)
In the business world, your brand’s identity is one of your most valuable assets. But what if someone starts imitating your brand without even registering their trademark? That’s where the concept of “passing off trademark” plays a critical role in protecting your goodwill and reputation. This article simplifies the legal concept, provides examples, and explains how to use the Trademark Journal to guard against copycats.
What is Passing Off in Trademark Law?
Passing off is a common law remedy used to protect the goodwill of a business against misrepresentation by another party.
Simple Definition:
“Passing off is when one person sells goods or services by deceptively using another’s brand name, packaging, or reputation, making the public believe that they’re the same.”
Key Concepts in Passing Off
| Element | Description |
|---|---|
| Goodwill | The value earned through reputation, trust, and consistent customer satisfaction. |
| Misrepresentation | False claims or visual similarities that mislead consumers into believing goods/services come from another brand. |
| Damage | Financial or reputational harm to the original business due to confusion created by the infringer. |
Example of Passing Off Case in India – ⚖️
🔹 Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001)
- Two companies using the name “Cadila” created confusion.
- Supreme Court of India ruled in favour of the more reputable company.
- Reinforced the importance of public perception in trademark disputes.
Types of Passing Off
| Type | Description | Example |
|---|---|---|
| Classic Passing Off | Using another’s brand name or trade dress. | A local snack brand uses a logo similar to Lays. |
| Extended Passing Off | Misrepresenting the quality or characteristic of goods. | Marketing a low-quality soap as “ayurvedic” , similar to Medimix. |
| Reverse Passing Off | Selling another’s product under your own label. | Buying original artwork and reselling it under your own name. |
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Difference Between Passing Off and Trademark Infringement
| Basis | Passing Off | Trademark Infringement |
|---|---|---|
| Registration Required | ❌ No | ✅ Yes |
| Legal Origin | Common Law | Statutory (Trademark Act, 1999) |
| Proof Required | Goodwill, misrepresentation, damage | Ownership of a registered mark |
| Protected Asset | Reputation | Registered Trademark |
ALSO READ | Types of Trademark Explained: Simple Breakdown for Businesses
Why is Passing Off Important?
- Protects unregistered trademarks
- Builds legal recognition of reputation
- Prevents brand dilution
- Allows fair competition
✨ Noteworthy Point:
Passing off is often the only remedy available to small or local businesses who have not yet registered their trademarks.
The Role of the Trademark Journal in Brand Protection
The Trademark Journal is an official weekly publication of the Indian Trademark Registry. It includes trademarks that are accepted and awaiting public opposition.
Why Should You Monitor the Trademark Journal?
- Detect similar marks to your brand
- File opposition within 4 months
- Prevent copycat registrations
- Stay aware of competitor branding
How to Access:
- Visit: IP India Trademark Journal
- Choose the relevant class/category
- Use “Ctrl + F” to search by brand name, owner, or description
Legal Procedure for Filing a Passing Off Suit
- Collect Evidence
- Proof of use (ads, sales, packaging, website)
- Customer testimonials
- Social media presence
- Send Legal Notice
- Inform the infringer to cease usage
- Mention your goodwill and potential damage
- File a Civil Suit
- Usually in the District or High Court
- Claim for damages, injunction, and legal costs
- Court Hearing & Judgment
- Based on arguments and evidence
- Temporary or permanent injunction granted
ALSO READ | Trade License in India: What It Is? and How to Apply [2025 Guide]
When to Choose Passing Off vs Registration
| Situation | Best Approach |
|---|---|
| Just starting a local brand | Monitor and rely on passing off |
| Growing an online or national business | Register trademark |
| Already well-known without registration | File passing off if infringed |
ALSO READ | Trademark Registration Fees in India: Your Complete Cost Breakdown
Best Practices to Avoid Being Accused of Passing Off
- Do a thorough trademark search before naming your brand
- Avoid using similar colours, fonts,and packaging of big brands
- Maintain distinct branding and product identity
- Register your trademark to reduce legal complications
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Conclusion
Passing off is a powerful tool to protect your brand, even without formal registration. In today’s fast-paced market, reputation is everything, and losing it due to imitation can hurt your business deeply. Combine the use of passing off law with regular monitoring of the Trademark Journal to ensure you stay one step ahead of infringers.
Frequently Asked Questions (FAQs)
1. Can I sue someone for using a similar name without registering my trademark?
Yes, under the law of passing off, you can sue if you have goodwill.
2. Is passing off a criminal offence?
No, it’s a civil wrong. But serious cases may involve criminal actions under other laws.
3. What is a trademark journal?
A weekly publication listing trademarks accepted for registration. It allows public objections.
4. Where can I check the trademark journal in India?
Visit → Trademark Journal section.
5. How much time do I have to oppose a mark in the journal?
You must file opposition within 4 months of the journal’s publication.
6. Do I need a lawyer to file a passing off case?
Not legally required, but it’s highly recommended due to legal complexity.
7. How long does it take to resolve a passing off suit?
Typically, 6 months to 2 years depending on the case.
8. What evidence do I need for a passing off claim?
Use invoices, advertisements, social proof, and testimonials.
9. Can I claim monetary damages in passing off?
Yes, courts may award damages or account for profits made by the infringer.
10. What if the infringer is using a registered trademark?
You can still pursue a passing off claim if your brand’s goodwill predates theirs.
