Common Law Rights in Indian Trademark Law: The Doctrine of Passing Off

In India, the protection of brand identity extends beyond mere registration.¹ While a registered trademark offers robust statutory rights under The Trademarks Act, 1999, businesses also possess common law rights stemming from the actual use and goodwill accumulated for their unregistered trademarks.² These vital common law rights are primarily enforced through the legal doctrine known as “Passing Off.”³

For startups, e-commerce brands, and any business with a growing reputation in India, understanding passing off is just as crucial as knowing about trademark registration. It’s the shield for those distinctive brand names, logos, and other identifiers that may not yet be formally registered with the Indian Trademark Registry (IP India).

What are Common Law Rights in Trademark?

Unlike statutory rights that arise from a formal process (like trademark registration), common law rights are uncodified legal principles derived from judicial precedents and long-standing customs.⁴ In the context of trademarks, these rights acknowledge that a business that has honestly used a particular mark over time, and has built up goodwill and reputation associated with that mark, deserves protection from others trying to unfairly capitalize on that established identity.

Even if your brand name registration or logo registration isn’t complete, if your mark has become synonymous with your products or services in the public’s mind, you gain certain rights.⁵ These are often referred to as unregistered trademark protection in India.⁶

The Doctrine of Passing Off: Protecting Unregistered Brands

The doctrine of passing off is the common law tort (a civil wrong) that allows the owner of an unregistered trademark to prevent another party from misrepresenting their goods or services as those of the original owner.⁷ It’s enshrined in Indian law, even though it’s a common law remedy, as Section 27(2) of The Trademarks Act, 1999, explicitly states that “nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or as services provided by another person, or the remedies in respect thereof.”

The fundamental principle behind passing off is preventing unfair competition and consumer deception.⁸ It ensures that no one can “sell their own goods under the pretense that they are the goods of another man.”

Essential Elements of a Passing Off Action (The “Classic Trinity”)

To successfully bring a passing off action in an Indian court, the plaintiff (the owner of the unregistered trademark) typically needs to prove three key elements, often called the “classic trinity” established in English common law and widely adopted by Indian courts:⁹

1. Goodwill and Reputation:
   • The plaintiff must demonstrate that their unregistered trademark has acquired goodwill and reputation in the market.¹⁰ This means the mark is recognized and associated with the plaintiff’s goods or services by a significant segment of the consuming public.
   • Evidence of goodwill can include: extensive and continuous use of the mark, high sales figures, significant advertising and marketing expenditure, testimonials, public recognition, and the duration of use.¹¹ Mere sporadic use or international reputation without spillover into India may not be sufficient.¹²
2. Misrepresentation:
   • The defendant, through the use of a similar or identical mark, has made a misrepresentation to the public.¹³ This misrepresentation leads, or is likely to lead, consumers to believe that the defendant’s goods or services are those of the plaintiff, or that there is a commercial connection between them (e.g., partnership, endorsement).¹⁴
   • The misrepresentation doesn’t need to be intentional; even an innocent misrepresentation can lead to a passing off action if it causes confusion. The courts primarily look at the likelihood of confusion among an “ordinary prudent consumer.”
3. Damage:
   • The plaintiff has suffered, or is likely to suffer, actual damage to their business or goodwill as a result of the defendant’s misrepresentation.¹⁵ This damage could be in the form of lost sales, dilution of brand reputation, tarnishment of the mark, or confusion among customers impacting future business.¹⁶
   • The courts often infer damage if goodwill and misrepresentation are clearly established, as the loss of control over one’s brand identity inherently carries the risk of damage.

Passing Off vs. Trademark Infringement: A Crucial Distinction

It’s vital to differentiate passing off from trademark infringement:

• Trademark Infringement: This action can only be brought by the owner of a registered trademark under Section 29 of The Trademarks Act, 1999. The primary requirement is to show that the defendant’s mark is identical or deceptively similar to the registered mark, used for similar goods or services, leading to a likelihood of confusion.¹⁷
• Passing Off: This action is available for both registered and unregistered trademarks, but it’s the only recourse for an unregistered trademark owner. It focuses on preventing misrepresentation and protecting goodwill, irrespective of formal brand registration.¹⁸

Key Difference Summary:

Feature	Trademark Infringement (Registered Mark)	Passing Off (Unregistered Mark)
Registration?	Yes, must be a registered trademark.	No, protects unregistered trademarks based on use.
Basis of Claim	Statutory right under Trademarks Act, 1999.	Common Law tort protecting goodwill and preventing misrepresentation.
Proof Required	Prove deceptive similarity to registered mark.	Prove goodwill, misrepresentation, and damage.
Remedy	Easier to obtain injunctions and damages.	More challenging; requires extensive evidence of market reputation.
Symbol	Allows use of ® symbol.	Allows use of ™ or ℠ symbols.

Legal Remedies in a Passing Off Action

If a passing off action is successful, the courts in India can grant various remedies, including:

• Injunction: A court order prohibiting the defendant from further using the infringing mark.¹⁹ This can be temporary (interim) or permanent.
• Damages: Monetary compensation for the losses suffered by the plaintiff due to the defendant’s misrepresentation.²⁰
• Account of Profits: An order requiring the defendant to hand over the profits they made by using the infringing mark.²¹
• Delivery Up/Destruction: Orders for the delivery up or destruction of infringing goods or materials bearing the infringing mark.²²

Conclusion

The doctrine of passing off stands as a vital pillar of brand protection in Indian trademark law, ensuring that businesses with established goodwill and reputation are not unfairly exploited, even without trademark registration. While it provides a crucial safety net for unregistered brands, the complexities of proving goodwill, misrepresentation, and damage can make passing off actions lengthy and resource-intensive.

Therefore, while common law rights offer protection, the most robust and proactive approach for any business in India is to pursue trademark registration with the Indian Trademark Registry. This provides statutory backing, nationwide coverage, and significantly strengthens your legal position against any form of brand misuse.

Avinash Bhatt
Email: Bhattavi93@gmail.com