Passing Off in India: Law, Landmark Cases, and Remedies

Passing off is the common law remedy that protects the goodwill a business has built in its trademark, trade name, get-up, or trade dress from misrepresentation by a competitor. In India, passing off is not defined in the Trade Marks Act 1999, but Section 27(2) expressly preserves the right of action against any person for passing off. The remedy applies to both registered and unregistered marks, and is governed by a body of judge-made law that traces its roots to English common law and has been applied by Indian courts in a consistent line of decisions from the Supreme Court, Delhi High Court, and other High Courts.

What is Passing Off?

Passing off is a tort recognised at common law. Its purpose is to prevent one trader from representing that their goods or services are those of another trader, thereby taking unfair advantage of the goodwill and reputation the other trader has built. The cause of action arises where the defendant’s conduct, whether intentional or not, is likely to mislead the public into believing that the goods or services offered by the defendant are those of the plaintiff or are connected with the plaintiff.

In Indian jurisprudence, the doctrine was defined by the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, as “the species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which the other has established for himself in a particular trade or business.”

The doctrine protects the economic value of reputation, not the mark itself. What is safeguarded is the goodwill attached to the indicia of commercial identity, which may include the trademark, trade name, packaging, colour scheme, label design, domain name, or other distinguishing features of a business.

Statutory Framework Governing Passing Off

Although passing off remains a common law remedy, the Trade Marks Act 1999 contains several provisions that preserve, reference, and regulate the action. Four sections are relevant.

Section 27: Preservation of Common Law Rights

Section 27(1) of the Trade Marks Act 1999 states that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark. Section 27(2) then provides that nothing in the 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 27(2) is the statutory bridge between codified trademark law and the common law remedy. It confirms that passing off is available even where the mark in question is unregistered, and ensures that the codification of trademark law does not displace the common law action.

Section 11(3)(a): Refusal of Registration

Section 11(3)(a) provides that a trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law, in particular the law of passing off protecting an unregistered trademark used in the course of trade. This provides a prior user with a ground to oppose the registration of a later identical or deceptively similar mark, even if the prior user does not hold a registration.

Section 11 also houses the well-known mark framework. Section 11(2) prohibits registration of a mark that would take unfair advantage of or be detrimental to a well-known mark in India, extending protection even across dissimilar classes of goods or services. Sections 11(6) to 11(9) set out the factors for determining whether a mark is well-known. Passing off and the well-known mark framework operate in parallel: passing off offers the common law route to cross-class protection through goodwill, while Section 11(2) offers the statutory route at the registration stage.

Section 134: Jurisdiction of Courts

Section 134(1)(c) requires a suit for passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff’s trademark, whether registered or unregistered, to be filed in a court not inferior to a District Court having jurisdiction to try the suit.

The additional plaintiff-friendly forum in Section 134(2) — permitting filing where the plaintiff resides or carries on business — extends, by its text, only to clauses (a) and (b) of sub-section (1), which deal with infringement of registered marks. It does not, by its text, extend to a pure passing off suit under clause (c). Territorial jurisdiction for a standalone passing off claim is therefore ordinarily assessed under Section 20 of the Code of Civil Procedure 1908, subject to case-specific principles on composite suits and cause of action. The Supreme Court in Indian Performing Rights Society Ltd v. Sanjay Dalia, (2015) 10 SCC 161 considered the interplay between Section 134(2), Section 62(2) of the Copyright Act 1957, and Section 20 of the CPC, and the earlier decision in Dhodha House v. S.K. Maingi, (2006) 9 SCC 41 emphasised that the court shall not readily presume jurisdiction that was not conferred by the statute.

Section 135: Relief in Suits for Passing Off

Section 135(1) lists the reliefs available in a passing off suit. These include:

• Injunction (including ex parte or interlocutory injunctions);
• At the plaintiff’s option, either damages or an account of profits;
• Delivery-up of infringing labels and marks for destruction or erasure.

Section 135(2) permits interlocutory orders for discovery of documents, preservation of infringing goods, and restraining the defendant from dealing with assets that might affect the plaintiff’s ability to recover damages. Section 135(3)(c) contains a defence to damages where the defendant establishes absence of knowledge or reasonable grounds to believe the plaintiff’s mark was in use, coupled with prompt cessation upon awareness — but this does not bar an injunction.

The Classic Trinity: Three Elements of Passing Off

The three-element test for passing off was articulated by Lord Oliver in Reckitt & Colman Products Ltd v. Borden Inc [1990] 1 All ER 873 (the Jif Lemon case). This formulation — the Classic Trinity — has been applied by Indian courts as the standard test for passing off, including in the Supreme Court’s decisions in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the latter of which confirmed that an action for passing off is premised on the rights of prior user generating goodwill, and operates unaffected by registration under the Act.

Goodwill and Reputation

The first element requires the plaintiff to establish that the goods or services offered under the mark have acquired a reputation and goodwill in the minds of a substantial section of the relevant purchasing public. Goodwill is the attractive force that brings in custom — it is the intangible value the business has built over time through sustained use, advertising, and market presence.

Factors that Indian courts consider when assessing goodwill include the duration and geographical extent of use, sales and turnover figures, advertising and promotional expenditure, market share, and evidence of consumer recognition. In Ciba-Geigy Ltd. v. Surinder Singh, 1998 PTC (18) 545, the Delhi High Court relied on extensive sales figures and advertising spend to establish the plaintiff’s goodwill in the “Cibaca” mark.

Indian courts have also recognised that goodwill can extend across borders. The foundational authority on trans-border reputation is N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, in which the Supreme Court upheld a passing off injunction in favour of Whirlpool based on prior user and trans-border reputation extending to India, notwithstanding that the plaintiff’s Indian registration had lapsed and that the defendant had secured its own registration. The Delhi High Court has applied the same principle in Honda Motors Co. Ltd. v. Charanjit Singh, 2003 (26) PTC 1 (Del), extending protection to marks with global repute even where the plaintiff had a limited physical presence in India.

The modern counterweight is Toyota Jidosha Kabushiki Kaisha v. M/s Prius Auto Industries Ltd., (2018) 2 SCC 1, in which the Supreme Court adopted the Territoriality Principle and held that trans-border reputation is not presumed. A plaintiff must prove that the goodwill or reputation of the mark had actually spilled over into India among the relevant section of the public at the relevant time — typically, the date on which the defendant adopted the impugned mark. International reputation alone is insufficient.

Misrepresentation

The second element requires the plaintiff to show that the defendant has made a misrepresentation, whether intentional or not, that is likely to lead the public to believe that the defendant’s goods or services are those of the plaintiff, or are connected with the plaintiff. The legal inquiry centres on the effect of the defendant’s conduct on the public, not on the defendant’s subjective intent.

Dishonesty is an aggravating factor but not a required element. Courts assess misrepresentation by examining the marks as a whole, considering phonetic similarity, visual similarity, structural similarity, the nature of the goods, the class of purchasers, and the overall impression created. The assessment is made from the standpoint of a consumer of average intelligence and imperfect recollection, viewing the marks as wholes rather than dissecting them side by side.

In Cadila Healthcare, the Supreme Court held that phonetic similarity between deceptively similar trademarks in pharmaceutical products carries particular weight in India, where a significant segment of consumers may be illiterate or unfamiliar with English, and where a pharmacy error in filling a prescription can have serious health consequences.

Damage or Likelihood of Damage

The third element requires the plaintiff to establish actual damage, or likelihood of damage, to their goodwill. Damage may take the form of lost sales, dilution of the distinctiveness of the mark, tarnishment of brand reputation, or loss of control over the reputation associated with the mark.

In the Kerala High Court decision in Shoranur Metal Industries LLP v. The Metal Industries Ltd, 2025 KER 69913 (RFA No. 287 of 2024, decided 18 September 2025), the Court set aside an injunction because the plaintiff failed to produce evidence of actual or likely damage. The decision illustrates that even where goodwill and some similarity are shown, the absence of evidence of damage can defeat a passing off claim, particularly where the marks at issue are descriptive.

Passing Off vs. Trademark Infringement

Passing off and trademark infringement are distinct causes of action, though they often arise on the same facts. The Supreme Court distinguished them in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, observing that while an action for passing off is a common law remedy in substance an action for deceit, infringement is a statutory remedy conferred by registration. The table below sets out the principal differences.

A plaintiff may bring both actions in a single suit. A registered proprietor whose mark is infringed typically also has a claim in passing off based on the goodwill associated with the registered mark.

Types of Passing Off

For explanatory purposes, passing off claims are often discussed under the following common-law variants. These are analytical categories drawn from English common law and comparative taxonomy rather than codified doctrinal boxes in Indian law.

Direct Passing Off

Direct passing off is the most straightforward form. The defendant uses an identical or deceptively similar trademark to that of the plaintiff, causing consumers to believe the defendant’s goods are those of the plaintiff. The Cadila Healthcare dispute over “Falcigo” and “Falcitab” is an example.

Indirect Passing Off

Indirect passing off involves misrepresentation through elements other than the mark itself, such as trade dress, packaging, get-up, colour scheme, or overall product presentation. The Reckitt & Colman case, in which the distinctive lemon-shaped container was protected, is the classical illustration. In Burberry Ltd v. Petrol Perfumes (2024), the Delhi High Court granted an interim injunction based on identical trade dress and typography, even though the word elements of the marks (“MY BURBERRY” vs “MY PETROL”) differed.

Reverse Passing Off

Reverse passing off occurs where a trader removes or obscures the plaintiff’s mark on goods produced by the plaintiff and sells them as their own. The public is misled into attributing the quality and characteristics of the plaintiff’s goods to the defendant. It is recognised in common law as a variant though less frequently litigated in India.

Extended Passing Off

Extended passing off protects the shared goodwill of a class of traders producing a specific category of goods, such as “Champagne” or “Scotch Whisky,” from misappropriation by traders whose goods do not share the characteristics. In India, this doctrine overlaps with geographical indication protection under the Geographical Indications of Goods (Registration and Protection) Act 1999.

Domain Name Passing Off

Domain names function as online business identifiers, and Indian courts have applied passing off doctrine to disputes over their registration and use. The foundational authority is Yahoo! Inc. v. Akash Arora, 1999 PTC (19) 201 (Delhi), in which the Delhi High Court granted an injunction restraining the defendant from operating under the domain “yahooindia.com,” holding that a domain name serves the same source-identifying function as a trademark and is entitled to equal protection. The principle has since been applied in a line of Delhi High Court decisions addressing cybersquatting, typosquatting, look-alike domains, and rogue e-commerce listings, and underlies the mandatory injunction approach increasingly used against online intermediaries in counterfeit cases.

Landmark and Recent Cases Supporting Passing Off in India

The following decisions form the spine of Indian passing off jurisprudence. They are presented in chronological order, showing the evolution of the doctrine from its English common law origins to its current application by Indian courts in both traditional and digital commerce contexts.

N.R. Dongre v. Whirlpool Corporation (1996)

Reported at (1996) 5 SCC 714, this Supreme Court decision is the leading Indian authority on trans-border reputation in passing off. Whirlpool Corporation’s Indian registration had lapsed, and the defendants had obtained their own registration for “Whirlpool” for washing machines. The Supreme Court upheld the injunction in favour of Whirlpool, on the basis of prior user and trans-border reputation extending to India through advertisements in international magazines circulating in India and limited sales through Indian channels. The decision confirmed two propositions of lasting importance: a passing off action can succeed even against a registered proprietor, and goodwill in a mark can spill over into India through advertising and awareness, without a full physical market presence.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)

This Supreme Court decision — (2001) 5 SCC 73; AIR 2001 SC 1952 — is the most cited passing off authority in India for deceptive similarity analysis, particularly in pharmaceutical trademarks. The dispute concerned two pharmaceutical marks, “Falcigo” and “Falcitab,” used for drugs treating falciparum malaria. Although the Court did not interfere with the lower courts’ dismissal of the injunction, it laid down principles for assessing deceptive similarity in pharmaceutical products. The factors identified include:

• The nature of the marks (word, label, or composite);
• The degree of resemblance, including phonetic and visual similarity;
• The nature of the goods and services in respect of which the marks are used;
• The similarity in the nature, character, and performance of the goods;
• The class of purchasers likely to buy the goods, their education, intelligence, and the degree of care likely to be exercised;
• The mode of purchasing the goods or placing orders;
• Any other surrounding circumstances.

The Court held that the weight given to each factor varies from case to case, and that phonetic similarity carries particular importance in the Indian pharmaceutical context given the literacy profile of Indian consumers and the serious health consequences of dispensing errors.

The Supreme Court’s decision in Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 sits alongside Cadila in the pharma passing off line. In a dispute over the mark “OCUFLOX” for ophthalmic preparations, the Court applied a “first in the world market” test and protected the international prior user against the Indian latecomer, even though the international user had not commenced sales in India. Two points emerge: medicinal marks attract heightened scrutiny because of public health consequences, and priority in the world market can support an injunction where the Indian defendant adopted later. The Court also cautioned that foreign corporations with no bona fide intention to enter the Indian market cannot be permitted to throttle Indian enterprises. Read with Toyota Prius, Milmet illustrates that the “first in the world” principle is not absolute; it is strongest in pharma and where intent to enter the Indian market is shown.

Honda Motors Co. Ltd. v. Charanjit Singh (2002)

Reported at 2003 (26) PTC 1 (Del), this Delhi High Court decision restrained the defendant from using “Honda” for pressure cookers. The plaintiff had built its reputation in India and globally for motor vehicles, motorcycles, and power equipment. The Court held that the international character and global repute of the “Honda” mark meant its goodwill extended into India, and that the defendant’s use on unrelated goods was designed to take unfair advantage of the plaintiff’s reputation. The decision expanded the scope of passing off to cross-category dilution and confirmed the Indian judicial approach to trans-border reputation in well-known marks.

S. Syed Mohideen v. P. Sulochana Bai (2016)

Reported at (2016) 2 SCC 683, this Supreme Court decision addresses the interaction between passing off and registration. The dispute concerned the “Iruttukadai Halwa” mark, with the respondent being a registered proprietor and the appellant being a prior user. The Court held that the scheme of the Trade Marks Act 1999 is such that the rights of a prior user are recognised as superior to those of a registered proprietor. Reading Sections 27, 28, and 34 together, the Court concluded that a registered proprietor cannot disturb or interfere with the rights of a prior user, and that an action for passing off, being premised on prior user rights that generate goodwill, is unaffected by registration. The decision is frequently cited in contemporary passing off litigation.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2017)

Reported at (2018) 2 SCC 1, this Supreme Court decision is the principal limiting authority on trans-border reputation. Toyota sued the Indian defendants for passing off in respect of the mark “Prius,” used by the defendants for automobile spare parts. The Supreme Court adopted the Territoriality Principle over the Universality Doctrine, holding that the plaintiff must prove substantial goodwill or spillover reputation within India at the relevant date — being the date on which the defendants adopted the mark. International reputation alone was found insufficient: advertisements in foreign magazines, information on internet portals, and limited circulation in India did not, on the facts, establish that the “Prius” mark had acquired the required Indian reputation before the defendants’ adoption. The decision, when read with Whirlpool, sets the current Indian position: trans-border reputation is recognised, but proof of spillover goodwill in India at the relevant time is required. Assertion of global repute alone will not suffice.

Burberry Ltd v. Petrol Perfumes & Ors (2024)

Decided by the Delhi High Court (Sanjeev Narula, J.) in February 2024, this case involved Burberry’s “MY BURBERRY” and “MR. BURBERRY” perfumes and the defendant’s “MY PETROL” and “MR. PETROL” products. Although the word elements differed, the defendant had adopted identical typography, label design, and trade dress. The Court held that trade dress similarity, combined with the typography, created a prima facie case of passing off. The Court clarified that passing off is an independent common law remedy that may succeed notwithstanding the defendant’s registration, particularly where prior user rights, trade dress, or overall misrepresentation are established, and relied on S. Syed Mohideen to support this proposition.

Shoranur Metal Industries LLP v. The Metal Industries Ltd (2025)

Decided by the Kerala High Court (C. Pratheep Kumar, J.) in RFA No. 287 of 2024 on 18 September 2025, this case set aside a decree of permanent injunction granted in favour of a Government of Kerala undertaking. The Court held that generic or descriptive marks such as “Metal Industries” cannot be monopolised even if registered, and that a passing off claim requires strict adherence to the Classic Trinity. The Court refused to infer confusion from mere similarity in firm names where consumer-facing brands were distinct and evidence of damage was lacking. The decision is a recent reminder that, particularly where marks are descriptive, courts require clear evidence of distinctiveness, confusion, and damage.

Evidence Required to Prove Passing Off

A passing off action places a substantial evidentiary burden on the plaintiff. Indian courts expect documentary and material evidence across each of the three elements of the Classic Trinity.

Evidence of Goodwill

• Date of first use and continuous use of the mark, supported by dated invoices or purchase orders;
• Annual sales figures and turnover attributable to the mark;
• Advertising and promotional expenditure, with supporting invoices and media plans;
• Samples of advertising, packaging, brochures, and marketing collateral;
• Market surveys or consumer perception studies;
• Press coverage, media mentions, and awards;
• Trademark registrations in India and other jurisdictions (relevant for trans-border reputation, subject to the Toyota Prius proof requirement);
• Distributor and retailer affidavits.

Evidence of Misrepresentation

• Physical product samples of both the plaintiff’s and the defendant’s goods;
• Photographs of shelves, displays, packaging, and trade dress;
• Screenshots of online listings, websites, and social media posts;
• Evidence of actual consumer confusion, such as misdirected enquiries, returns, or complaints;
• Affidavits from consumers, retailers, or distributors reporting confusion;
• Investigation reports from trademark watch services or private investigators.

Evidence of Damage

• Loss of sales, pricing pressure, or market share erosion correlated with the defendant’s entry;
• Documented customer complaints attributable to the defendant’s inferior goods;
• Evidence of dilution of distinctiveness;
• Expert evidence on brand value erosion, where available.

In practice, the outcome of a passing off action often turns less on abstract similarity and more on the quality of documentary evidence establishing goodwill and confusion. Early structuring of evidence — dated records of first use, organised sales and advertising data, and documented instances of actual confusion — significantly improves the likelihood of securing interim relief.

Remedies Available in a Passing Off Action

Section 135 of the Trade Marks Act 1999 governs the reliefs available in passing off suits. The reliefs are equivalent to those available in an infringement action.

Injunction

An injunction is the primary relief in passing off cases. Indian courts routinely grant:

• Ex parte ad-interim injunction at the first hearing where urgency is shown;
• Interim or interlocutory injunction during the pendency of the suit;
• Permanent injunction upon final decree.

The tests for granting interim injunctions were set out by the Supreme Court in Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727, which requires the plaintiff to establish a prima facie case, balance of convenience, and irreparable injury.

Damages or Account of Profits

Section 135(1) of the Trade Marks Act, 1999 applies to both infringement and passing off, and provides the plaintiff with alternative monetary remedies: damages or an account of profits. While both may be pleaded in the alternative, the plaintiff must elect one at the stage of final relief; both cannot be granted.

Damages compensate the plaintiff for loss suffered, whereas an account of profits requires the defendant to disgorge gains attributable to the wrongful use.

Under Section 135(3)(c), where the defendant proves that adoption was innocent, with no knowledge or reasonable grounds to believe the plaintiff’s mark was in use, and that use was discontinued promptly upon awareness, the court shall not grant damages (other than nominal damages) or an account of profits. This limitation does not affect the grant of injunctive relief..

Delivery-Up and Destruction

Section 135(1) permits the court to order delivery-up of infringing labels and marks for destruction or erasure. This is frequently ordered in counterfeit and look-alike cases to prevent residual circulation.

Interlocutory Orders

Section 135(2) permits the court to pass interlocutory orders for discovery of documents, preservation of infringing goods and evidence, and restraining the defendant from dealing with assets in a manner that may affect the plaintiff’s ability to recover damages. Courts also grant Anton Piller orders (civil search orders) and John Doe orders (injunctions against unknown defendants) in appropriate cases.

Defences to a Passing Off Claim

A defendant in a passing off suit may raise several defences. The success of each depends on the facts and the evidence produced.

Denial of Goodwill

The defendant may contest that the plaintiff has not established reputation or goodwill in the mark in India, particularly where the mark is generic, descriptive, or commonly used in the trade. The Kerala High Court’s decision in Shoranur Metal Industries (2025) illustrates this defence succeeding against descriptive marks.

Honest Adoption / Absence of Dishonest Intent

The defendant may plead honest adoption — that the impugned mark was adopted without knowledge of the plaintiff’s mark and without intention to trade on the plaintiff’s goodwill. Honest adoption is relevant as a factual matter, particularly on the question of damages under Section 135(3)(c). However, it does not, on its own, displace the plaintiff’s passing off claim if goodwill, misrepresentation, and likely damage are otherwise established. Section 12 of the Trade Marks Act 1999 addresses honest concurrent use in the context of registration before the Registry, and is not a standalone litigation defence in a passing off suit.

Delay, Laches, and Acquiescence

Mere delay in bringing an action does not bar relief, but prolonged delay coupled with conduct suggesting consent may amount to acquiescence. In Ciba-Geigy v. Surinder Singh (1998), the Delhi High Court held that mere lapse of time does not amount to laches, and that acquiescence requires conduct evidencing an inferred licence.

Use of Own Name

Section 35 of the Trade Marks Act preserves the right of a person to use their own name or the name of their place of business in good faith, but this does not extend to use that is calculated to deceive or that conflicts with a prior user’s established goodwill.

Generic or Descriptive Nature of the Mark

Words that are generic, descriptive, or commonly used cannot be monopolised unless they have acquired secondary meaning distinctively associated with the plaintiff. The Kerala High Court in Shoranur Metal Industries (2025) applied this principle to reject a claim based on the mark “Metal Industries.”

Limitation Period

The limitation period for filing a suit for passing off is ordinarily three years from the date on which the right to sue accrues, under Article 113 of the Limitation Act 1963 (the residuary article applicable to suits not otherwise provided for).

Where the passing off is a continuing act, a fresh cause of action accrues each time an act of passing off is committed. Consequently, a plaintiff is not necessarily barred from seeking an injunction and damages in respect of recent acts even if the defendant’s initial adoption of the mark was more than three years ago, though relief in respect of earlier acts may be time-barred.

Practical Guidance for Businesses

A passing off claim is evidence-intensive. A business that wishes to protect its brand through passing off, or rely on it as a backstop alongside registration, should adopt the following practices.

Build and Document Goodwill

• Maintain consistent use of the mark in the same form across products, packaging, and advertising;
• Keep dated records of first use, sales figures, and advertising expenditure;
• Preserve samples of packaging, labels, advertisements, and press coverage;
• Register the mark at the earliest opportunity to obtain statutory rights in addition to common law protection.

Monitor for Infringement

• Subscribe to a trademark watch service to identify look-alike applications at the Trade Marks Registry;
• Monitor e-commerce platforms, social media, and domain registrations for potentially infringing uses;
• Document instances of actual consumer confusion as they arise.

Act Promptly

• Issue a cease-and-desist notice promptly on discovering infringement;
• File suit within a reasonable time to avoid arguments of acquiescence;
• Where urgency is established, seek ex parte or interim injunctive relief at the first hearing.

Rely on Registration Where Available

Passing off is a backstop, not a substitute. Registration under the Trade Marks Act 1999 confers statutory rights under Section 28, shifts the evidentiary burden, and simplifies enforcement. A registered proprietor also retains the common law right to sue in passing off, and the two actions can be combined in a single suit.

Frequently Asked Questions – passing off

The Doctrine in Practice

Passing off is a resilient common law doctrine that has adapted to the commercial realities of modern India, from Supreme Court decisions on pharmaceutical marks and trans-border reputation to High Court decisions on e-commerce counterfeiting in 2024. Section 27(2) of the Trade Marks Act 1999 keeps the doctrine alive in a codified statutory regime, and Section 135 provides the procedural machinery for enforcement.

For a trademark owner, passing off offers protection where registration is unavailable, delayed, or narrower in scope than the goodwill that has been built. For a registered proprietor, it offers a complementary remedy that captures trade dress, cross-category reputation, and claims against other registered proprietors. The line of authority from Reckitt & Colman through Whirlpool, Cadila Healthcare, Honda Motors, S. Syed Mohideen, Toyota Prius, and most recently Burberry and Shoranur Metal Industries shows a doctrine that is both settled in its core test (the Classic Trinity) and calibrated in its application — extending goodwill across borders while requiring proof of Indian reputation at the relevant time.

Businesses that invest in their brand should also invest in documenting goodwill, monitoring for infringement, and acting promptly when misrepresentation occurs. Registration under the Trade Marks Act 1999 remains the primary route to strong, enforceable trademark rights, and passing off complements registration rather than replacing it.

Disclaimer: This article is for general information only and does not constitute legal advice. The law on passing off is case-specific and evidence-intensive. Readers should consult a qualified trademark practitioner for advice on particular facts.