PASSING OFF UNDER TRADEMARKS ACT, 1999

WHAT IS PASSING OFF?
Passing off ensues when a person intentionally passes off their goods or services as those
belonging to another party. This action of falsification often harms the goodwill of a person or
business, causing financial or reputational damage.
In addition to straight passing off, there can also be:
 extended passing off – where misrepresentation of a particular quality of a product or
service causes harm to another's goodwill
 reverse passing off – where a trader markets another business' goods or services as being
his own
Section 27 of the Trademarks Act, 1999 provides that no action for infringement will take place
for an unregistered trademark. When a trader makes a misrepresentation that harms the plaintiff’s
goodwill, the passing-off action arises.
The rule of passing off, i.e. “Nobody has the right to represent his goods as the goods of
somebody else” was decided in the case of Perry v Truefitt (1842). The passing off law has
changed over time. Previously it was restricted to depicting one person’s goods as another. Later
it was extended to trade and services. This was later expanded to business and non-business
activities. Now, it applies to many forms of unfair trade and unfair competition where one
person’s activities harm the goodwill associated with the activities of another person or group of
individuals.
ELEMENTS OF PASSING OFF
To institute a claim for passing off, you must meet three crucial conditions:
1. Goodwill – one needs to attest that they own a 'reputation' of the mark that the people link
with that precise product or service.
2. Misrepresentation – one must demonstrate that the trader has confused or deceived
customers into thinking their products and services are actually yours.

3. Damage – Additionally, the trader must demonstrate that the misrepresentation damaged
or is likely to damage your goodwill, cause actual or foreseeable financial or reputational
loss, or both.
Rights relating to passing off are created progressively with use. Determining goodwill in a
trademark can be particularly challenging. Most people think that a company's goodwill and
reputation give it a personality and set it apart from its rivals and its products or services.
REMEDIES FOR PASSING OFF
There are several options available to you if you win a passing off claim. You could:
1. Put in for a restraining order to prevent the company from using your trademark or
goodwill.
2. Put in to have the infringing goods destroyed.
3. Sue for damages or seek compensation for lost profits.
4. Request an investigation to determine loss.
CONCLUSION
When there is misrepresentation, passing off occurs when it damages one's business's goodwill,
and thirdly, in the damages. It safeguards traders' goodwill regarding their products and services.
The "goodwill" of a brand is its reputation for particular goods or services, which draws
customers in. It can be held by a single trader or shared between all producers of a particular
product in a particular region.
From a business perspective and to safeguard customers from dishonesty and fraud, trademark
protection is essential. Unregistered goods and services are subject to the passing-off penalty.
Passing off has a much broader scope than trademark infringement.
Even though filing a passing off suit is the same for both registered and unregistered marks, it is
more difficult to establish goodwill and reputation for unregistered marks, so the burden of proof
is higher. The Act provides some relief to a number of users who would otherwise be unable to
pursue any legal remedy for trademark infringement in order to allow unregistered trademarks.