Passing off Trademark: Learn everything you need to know

Passing off trademark refers to a legal action. It helps to address the unauthorized use of goods, services and goodwill. In today’s fast-paced market, brands and businesses focus on reputation. Having a trademark helps you to protect your brand’s uniqueness. But not all businesses respect this trademark. Passing off trademark occurs when a business misleads customers. They do it by using a logo or a name closely similar to another business. In this case, passing off trademark acts as a shield for your business. This helps the customers by saving them from confusion. Are you a business owner planning to opt for trademark registration? Are you someone who is doing business without a trademark?

Or, are you just an explorer who loves to read? Then let me tell you. You have landed on the right page. Sit tight and pay attention. This blog will be your ultimate guide to know everything about passing off trademark.

Let’s learn together.

What is the passing off Trademarks Act 1999?

To answer your question, what is the passing off Trademarks Act? In simple words:

• The Trademarks Act 1999, India, recognizes the common law principle remedy of passing off and clarifies that rights in an unregistered trademark can still be enforced through passing off actions.
• You can find this in section 27
• This helps to save your rights as the owner of your brand
• It allows you to take action against an individual. Yes, that’s true.
• If anyone mistakes their goods and services as belonging to a famous business

Sounds interesting, right? Let me tell you more about passing off trademark:

• It helps to protect the goodwill of your brand
• Even if you are a customer, this helps you to stay informed.
• Passing off trademark prevents confusion about a brand

What if you are not a trademark-registered business?

• This protects you from being imitated in a misleading way

Is there any recent case about passing of trademark in India?

Want to know about a recent case of passing of trademark? Here it is

• This case has come under the Bombay High Court
• The conflict takes place when Sunpharma accused Meghamani Lifesciences
• This revolves around trademark infringement against the product RACIRAFT
• Sunpharma accuses Meghanani Lifesciences’ products, EsiRaft

For your information,

• Both these products are oral suspensions. These are used for problems like heartburn and indigestion
• Sunpharma’s RACIRAFT was registered in 2022, under class 5
• This brand also states that EsiRaft is look-wise and sound-wise similar to SunPharma’s product
• They have said EsiRaft’s two colours were also similar

Now, you need to know Meghamani’s stance on this:

• This brand said RAFT is a generic word
• RAFT here means the foam-like structure. It comes from sodium Alginate
• Moreover, the term ESI sounds like Esay
• ESI in their business refers to Enhanced System Improvement
• They said SunPharma’s is a word mark and not a colour mark

The verdict of the Court:

• In this discussion, SunPharma fails to prove “infringement of trademark and passing off”
• There are no disruptive similarities between these two products
• Hence, Meghamani Lifesciences cannot be “restrained from use of the impugned mark”
• This order came on 7th April, 2025

Criteria for passing off trademark

Now you know about this case, I know what question arises in your mind. Is there any criteria for passing of trademark? Yes. It rests on three categories:

(i) Reputation

• When a strong reputation is connected with your brand, product or business name
• You need to prove this in court
• Goodwill must be there with your brand

(ii) Deception

• The person (against who you have complained) must mislead the customers
• Here, the misleading must happen in terms of belief
• If this person tries to establish that his or her goods and services is connected to your brand’s reputation.

(iii) Damage

In the case of passing of trademark, you need to prove:

• The accused person’s action has caused damage of goodwill of your business
• Or, this is likely to cause damage to your business
• This damage can be in many forms
• It includes loss of sales, decreasing your brand value or brand image.

If you can prove that anyone is causing these three things to your brand. You can act under the passing off trademark.

Is passing off Trademark and Trademark infringement the same?

Passing off trademark and trademark infringement are not the same.  Let me simplify it for you:

What are the types of passing off trademark in India?

There are three kinds of passing off trademark in India. Let me tell you one by one:

1. The direct passing off trademark:

• As the name suggests to you, it is straightforward
• It includes intentionally using the identical trademark. Or, in case of a very similar trademark, it takes place
• This is a direct attempt to deceive customers about the originality
• It can cause essential damage to your brand image if you are the original trademark owner. 

2. Indirect passing off trademark

• Here, the element of deception is not very prominent
• The trademark is not identical. However, it has a strong similarity with your brands
• It includes overall sound, marketing and logo of the brand
• This can also mislead customers into thinking that this product is from the original owner

But you need to remember this. Proving indirect passing off trademark is a bit challenging

 (c) Reverse passing off

• This is a less common category of infringement
• Here, the imposter replaces the genuinely trademarked good or goods
• The customers can be deceived based on packaging or branding
• This dilutes your (original owner’s) goodwill with time
• People thinks of the degraded quality of products is coming from your brand.

Final thoughts

So, to wrap up our discussion, passing off a trademark is a serious problem. It hampers your brand’s reputation and goodwill.  Sometimes, it negatively affects the revenue of your brand.

The Trademarks Act offers protection against passing off. However, as a business, you should remain conscious about this.

You must take legal action when anyone copies and uses your trademark as their own.

It does not matter if you are trademark registered or not.

Understanding the concept of passing off trademark shields your brand.

So, what are you waiting for? Be proactive and protect your intellectual property.

FAQs

1. Can passing off trademark applies to my business? It is not trademark registered.

Yes, passing off trademark applies to unregistered businesses also. If you can proof good will and reputation, you can protect your brand.

2. How to prove passing off trademark in the court?

You need to show your trademark’s reputation, the misinterpretation that the other business have made. Besides, you need to proof the damage caused by misinterpretation. Burden of proof lies on the plaintiff.

3. Is passing off trademark only related to logos?

No, passing off trademark is not only related to logos. This applies to business names, branding, packaging, slogans and so on that can confuse customers.

Disclaimer

This article is for informational purposes only and does not constitute legal advice. Online Legal India is a digital platform. If you require legal assistance, we strongly recommend consulting a qualified lawyer or law firm.