Passing off (and its difference from infringement) — Intellectual Property Rights I Notes

Passing off (and its difference from infringement)

You do not need a registration certificate to stop a copycat. The common law has always said: you may not sell your goods as someone else’s. When a lemon-juice maker copied the plaintiff’s plastic-lemon packaging, the House of Lords in Jif Lemon protected the unregistered get-up — pure passing off.

What passing off is

Passing off is a common-law tort (preserved by s.27(2)) that protects the goodwill of a trader against a misrepresentation that damages it. It protects unregistered marks and get-up — no registration is required. The principle: no man may sell his goods as those of another.

The classical trinity — the three things a claimant must prove (Reckitt & Colman v Borden, the Jif Lemon case, 1990):

• Goodwill — the claimant has established reputation/goodwill in the mark or get-up in the minds of the public.
• Misrepresentation — the defendant made a misrepresentation (deliberate or not) likely to lead the public to believe his goods are the claimant’s.
• Damage — the misrepresentation caused, or is likely to cause, damage to the claimant’s goodwill.

(An older formulation lists five elements — Erven Warnink v Townend, the Advocaat case, 1979 — but the trinity is the standard exam answer.)

Passing off versus infringement — the key distinctions

The crisp line for the exam: infringement protects a registered mark and needs no proof of goodwill; passing off protects goodwill and needs no registration.

Trade Marks Act, 1999, s.27(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.”

In Simple Terms: Passing off stops a trader from pretending his goods are yours, protecting the reputation you have built even without registration. Prove three things — you have goodwill, he misrepresented, and it damaged (or will damage) you. It is the unregistered cousin of infringement.

🧩 WORKED EXAMPLE — “Raymond” textiles v “Raymond Pharmaceutical”

Facts. The plaintiff has the well-known registered mark “Raymond” for textiles. The defendant starts a company “Raymond Pharmaceutical (P) Ltd” for medicines.

Rule. For a well-known mark, both infringement by dilution (s.29(4), cross-class) and passing off (misrepresentation damaging goodwill) may lie even for different goods.

Apply. “Raymond” is well-known; using it as a trade name for pharmaceuticals misrepresents a connection with the famous house and dilutes its distinctiveness, harming its goodwill — the trinity is satisfied (goodwill, misrepresentation of association, likely damage/dilution).

Conclusion. The plaintiff succeeds in passing off (and dilution); the defendant can be restrained despite the different goods.

flowchart TD
    PO["Passing off (s.27(2)) — the trinity"]:::root
    PO --> G["Goodwill — established reputation"]:::leaf
    PO --> M["Misrepresentation — likely to deceive"]:::leaf
    PO --> D["Damage — to goodwill"]:::leaf
    PO --> KEY["No registration needed (vs infringement)"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

• Reckitt & Colman v Borden (1990) — the Jif Lemon case; laid down the classical trinity of goodwill, misrepresentation and damage.
• Cadila Health Care v Cadila Pharmaceuticals (2001) — applied passing-off principles to medicinal marks alongside the similarity test.
• Laxmikant V. Patel v Chetanbhai Shah (2002) — passing off protects a trader’s name/goodwill; an injunction should issue against a deceptive later user.

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