Legal Remedy for Unregistered Trademark Holders
02 Apr 2016  |  Views: 55  | 
Tushar Bhargava

“No body has any right to represent his goods as the goods of somebody else.”- Lord Halsbury Passing Off (not referring to college or school here) is a common law tort, which can be used to enforce the rights of an unregistered trademark holder. What it does is that it prevents one person from misrepresenting his goods and services as that of another. This tort is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up and is likely to damage the goodwill and reputation of a business. Simply put, you can’t pass off some body else’s goods and services as your own, that’s all.

The concept of Passing Off has been extended over time. The concept of “personality rights” is an extended form of Passing Off. Celebrities use it as a means of enforcing their “personality rights” in common law. Another form of extended Passing Off is known as “reverse passing off.” This is when the defendant claims the plaintiff’s work as his own.

Fundamentals and Modern Elements of Passing Off

In the case of Reckitt & Colman Ltd. V. Borden Inc. (1990) RPC 341, the three fundamentals or the classic trinity of Passing Off were laid down as:



Damage to goodwill

The modern elements of Passing Off were laid down in the Erven Warnink v. Townend & Sons, (1979) AC 731, 742. They are:


Made by person in course of trade

To prospective customers of his

Which is calculated to injure the business or goodwill of another trader

Which causes actual damage to business or goodwill of the trader by whom the action is brought?

How to Apply Passing Off as a Legal Remedy in India

In India, the Passing Off remedy is available in cases of unregistered trademarks as laid down in section 27 of the Trademark Act, 1999. Section 27 of the Act states that: No action for infringement of unregistered trademark – (1) No person shall be entitled to institute any proceeding to prevent or to recover damages for, the infringement of an unregistered trademark. (2) 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 or as services provided by another person, or the remedies in respect thereof.

How Passing Off Can Be a Useful For Trademark Holders

The concept of passing off is a very valuable instrument to protect the rights of those trademarks holders who do not register their marks due to varying reasons. Further, it recognizes that registration is not a “necessity” but it is always better to register your mark for practical purposes. This concept has been used on numerous instances and provides relief to those who don’t register their marks and it looks down upon those who try to pass off goods as those of another. In Tata Sons v. Manu Kosari, 2001 (1) CTR 339(Del.), it was held that the rendering of Internet services is also entitled to protection the same way as goods, services are, and trademark law applies to activities on the Internet. With technological advances changing the way we provide goods and services, particularly in cyber space, domain names are also now entitled to equal protection as trademarks as they are no longer considered as mere addresses.

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