Passing off

Passing off is the act or an instance of falsely representing ones own product as that of
another in an attempt to deceive potential buyers and it is actionable in tort under the law of
unfair competition. 1 The sole object of passing of is to protect the goodwill and reputation of
business from encroachment by dishonest competitors and based on the principle that
nobody has any right to represent his goods as the goods of somebody else. 2 Passing off is
said to be 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
other has established or himself in a particular trade or business.3 In the case of Baker
Hughes Limited & Anr. vs Hiroo Khushalani & Anr.4, it was observed by the court that in
order to establish the passing off, three principles must be fulfilled, that, plaintiff has
acquired a reputation or goodwill in his goods, name or mark; a misrepresentation, whether
intentional or unintentional, which proceeds from the defendant by the use of the name or
mark of the plaintiff or by any other method or means and which leads or is likely to lead the
purchaser into believing that the goods or services offered by the defendant are the goods and
services of the plaintiff, or that the goods and services offered by the defendant are the result
of its association with the plaintiff; and The plaintiff has suffered or is likely to suffer damage
due to the belief engendered by the defendants representation.
Plaintiff has not acquired a reputation or goodwill:
Goodwill is the benefit of the good name reputation and connection of the business. The
goodwill must emanate from the particular centre or source. 5 It is very important to establish
the goodwill of a trademark in passing off actions. The concept of goodwill is derived from
reputation.6 In the instant case plaintiffs off spring show on the disputed character, Boromir
The Conqueror was globally released on 9th February 2016 while defendants obtained
1 Blacks law dictionary.
2 BL WADHERA BBOK
3 CAdila Health care ltd. V Cadila Pharmecheuticals ltd. AIR 2001 SC 1952: Wander Ltd. Vs. Antox
India Pvt Ltd., 1990 Suppl. SCC 727.
4 2000 102 CompCas 203 Delhi, 74 (1998) DLT 715, ILR 1999 Delhi 41
5 Commissioner of Inland revenue v. Muller and company mergarian Ltd., (1910)
A.C. 217
6 Double Coin Holdings Ltd. V Trans Tyres (India) Pvt. Ltd., 2011 (46) PTC 194
(Del.) at pp. 203-04, 07-08

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trademark registration on 4th January 2015. Even character didnt have reputation and
goodwill in the market as being mentioned very less in the show and book series.

a misrepresentation:
An action for passing off, as the phrase Passing Off itself suggests, is to restrain the
defendant from passing off its goods or services to the public as that of the plaintiffs. 7 In an
action of passing off, the issue is whether the defendant is selling the goods or services so
marked as by design or calculated to lead the public to believe that they are the plaintiffs
products.8 Thus using someone elses reputation to make economic profit by
misrepresentation. This said misrepresentation could be in the form of innocent
misrepresentation or deliberate representation which is immaterial in case of passing off. 9 In
the instant case there was no deceit or misrepresentation on the part of defendants as their
business was related to comic book publication and plaintiffs trade was related to tv show
thus creating no confusion on the public.
The plaintiff has suffered or is likely to suffer damage
If there is likelihood of the offending trademark invading the proprietary right, a cse of
injunction is made out.10 The plaintiff does not have to prove actual damages in order to
succeed in an action of passing off, likelihood of damage being sufficient.11 As the business of
plaintiff and defendant are different in nature, then it cannot be deemed to cause damages to
the plaintiffs and work of plaintiffs is not to be protected under Section 27 of the Trade and
Merchandise Marks Act, 1958.12

7 Satyam Infoway Ltd. V Sifynat solutions Pvt. Ltd: (2004) 6 SCC 145: AIR 2004
SC 3540
8 Unimed Technologies Ltd. V. Eyekare kilitch Ltd.: 2013 (54) PTC 394 (Mad.) at
pp. 397-98
9 Mind Gym Ltd. V Mindgym Kids Library Pvt. Ltd.: 2014 (58) PTC 270 (Del.) at
P280
10 Century Traders v. Roshan Lal Duggar &co. AIR 1978 Del. 250
11 Laxmikant V. Patel v Chetanbhai Shah: (2002) 3 SCC 65: AIR 2002 SC 275

WRITTEN SUBMISSION ON BEHALF OF THE APPELLANT

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12 No action for infringement of unregistered trade mark. (1) No person shall be entitled to institute any
proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) 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 the remedies in respect thereof.

WRITTEN SUBMISSION ON BEHALF OF THE APPELLANT