The Passing Off Action

In one line

Passing off is the common law action by which a trader stops another from selling his goods as the plaintiff's, and it belongs to whoever has the goodwill, registered or not.

Where it comes from

It is older than any register. The action began as an action on the case for deceit, in which the wrong was lying to the public; equity then restrained the conduct by injunction, and by the nineteenth century the tort had settled into its modern form, protecting the trader rather than the deceived customer.

No man may sell his goods as the goods of another. That is the sentence the tort is built on, and every Indian judgment repeats it.

The Act does not create it and does not codify it. It touches it three times:

• section 27(2), which saves it: "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";
• section 134(1)(c), which requires the suit to be brought in a District Court or above;
• section 135, which supplies the reliefs, the same reliefs as for infringement.

What must be pleaded and proved

The three elements, worked in chapter 1030. Goodwill owned by the plaintiff, a misrepresentation by the defendant, and damage or the likelihood of damage flowing from it.

A plaint that omits any of them is defective. In practice the fatal omission is goodwill: a plaint that asserts reputation without figures invites a dismissal.

What a well drawn plaint contains.

• The date the plaintiff adopted the mark, name or get up, and the circumstances of adoption.
• Continuous use since, year by year, with sales figures.
• Advertising expenditure, with particulars.
• The manner in which the goods reach the public, and the class of customer.
• The defendant's act, its date, and how it was discovered.
• The similarity, described feature by feature.
• Any instance of actual confusion.
• The damage, actual and apprehended.

The relation with registration

Registration is not a precondition. That is the whole point of section 27(2).

Registration is not a defence either. S. Syed Mohideen v P. Sulochana Bai, (2016) 2 SCC 683.

Facts. The respondent was the registered proprietor of IRUTTUKADAI HALWA, registered in 2007, but her family had sold halwa under that name since 1900. The appellant, who had also obtained a registration of the same mark, was sued for declaration and injunction.

Held. The prior user succeeded. Passing off protects goodwill built by use, and the rights it recognises are independent of and, where they are older, superior to rights conferred by registration. Two registered proprietors do not stand on an equal footing where one is the prior user, and sections 27(2), 34 and 35 all show that the Act preserves rather than displaces the common law right.