Passing off is a common law action that protects goodwill against misrepresentation. It is often described as a remedy for owners of unregistered trademarks, but it can also be invoked by registered trade mark owners, and what the action actually protects is the business reputation a trader has built, regardless of registration status.

In its classical form, passing off stops one trader from misrepresenting that its goods or services originate from, or relate to, another trader. Extended passing off applies the same underlying principle to a different situation. A class of traders, rather than a single business, can hold a shared, or collective, reputation attached to a name or description, and that shared goodwill is protected when an outsider to the class misrepresents that its goods belong to it.

Development of the concept

The doctrine took shape gradually, through English cases. In J Bollinger v Costa Brava Wine Co Ltd, French champagne producers stopped a Spanish sparkling wine from being sold as “Spanish Champagne”, establishing that a geographical name tied to a defined method of production could carry a reputation shared across an entire trade rather than owned by one person.

The same reasoning was applied in Vine Products Ltd v Mackenzie & Co Ltd and to Scotch whisky in John Walker & Sons Ltd v Henry Ost & Co Ltd. Each case worked through the same problem that a term which had acquired meaning through years of association with a defined class of goods was being borrowed by an outsider to that class.

The House of Lords gave the doctrine a settled shape in Erven Warnink BV v J Townend & Sons (Hull) Ltd (Advocaat case), the Defendant manufactured a cheaper competing alcoholic egg drink using Cyprus wine instead of brandy and marketed it as "Keeling's Old English Advocaat", despite it bearing no relation to the Dutch alcohol drink “Advocaat” made up of egg yolk, spirits, brandy and sugar.

The House of Lords ruled in favour of the Claimants, holding that Townend was liable for passing off. The court restrained the defendants from using the name "Advocaat" for non-spirit-based egg products.

Essential elements required to establish claim for extended passing-off

1. Lord Diplock set out five requirements for a passing off action:

2. misrepresentation made by a trader

3. in the course of trade,

4. to prospective customers,

5. calculated to injure business or goodwill,

6. causing or threatening actual damage.

Limitations

There is a limit built into the doctrine, and English courts recognised it early. In HP Bulmer Ltd v J Bollinger SA, the Court of Appeal declined to restrain long-standing use of expressions such as “champagne cider” and “champagne perry”, on the ground that consumers understood these terms for what they were and were not being deceived by them. A claimant relying on extended passing off still has to show that ordinary consumers would actually be misled. The prestige attached to a name is not, by itself, enough to keep every related use of a word out of the market.

Difference between Passing off and Extended Passing off

Application of the doctrine in India

Indian trademark law accepted this common law remedy without much difficulty. Section 27(2) of the Trade Marks Act, 1999 preserves the right to sue for passing off even if the mark is not registered, so that the action runs alongside statutory protection rather than being displaced by it. Indian courts have treated extended passing off as available in principle but their boundaries have been worked out on their own facts, drawing on the English cases directly.

Judgement relating to application of extended passing-off in India

The Bombay High Court in The Scotch Whisky Association v Pravara Sahakar Shakar Karkhana Ltd, where the defendant, a Maharashtra cooperative, sold Indian whisky under the names “Drum Beater” and “Gold Tycoon”, with labels showing a Scottish drummer in a kilt and tartan band, and the phrase “Blended With Scotch”, without proving that any Scotch whisky was actually in the bottle.

The Court applied the principles laid down in Erven Warnink, holding that the plaintiff association did not need to show consumers thought that the whisky came from any particular Scottish producer, it was enough that the label, taken as a whole, falsely associated an Indian product with the recognised category of Scotch whisky, injuring the collective goodwill of the trade the Association represented. The court also rejected the defendant's argument that adding a small, unspecified quantity of genuine Scotch whisky to the blend would justify the label. An ordinary consumer, the court held, would still read “Blended With Scotch” as describing a whisky every blended component of which was Scotch.

The Supreme Court's decision in Heinz Italia v Dabur India Ltd, the dispute concerned packaging similarity between “Glucon-D” and “Glucose-D”, two competing glucose drinks made by direct competitors in an ordinary case of source confusion, not shared class goodwill and the Court relied on the five Erven Warnink ingredients as the general test for passing off, granting an interim injunction on the strength of phonetic similarity and the risk of consumer confusion.

The Delhi High Court in RB Health (US) LLC v Dabur India Ltd (2020), where the dispute arose over the shape and trade dress of a sanitising soap bar. The Court recognised that a passing off action can rest on both the classical form, or on the extended form and described the latter as protecting “shared goodwill” accruing to a class of traders, recognised in cases such as Bollinger and Erven Warnink, before applying the classical test to the facts before it.

The Court declined to grant an injunction as the shape and colour of the soap bar were common to several products already on the market, and the disputed taglines were not registered trademarks, so no real likelihood of confusion had been shown. This confirms that Indian courts treat the two forms of passing off as branches of the same underlying tort, applied to whichever facts a dispute presents.

In Tea Board v ITC Ltd dispute arose where the Tea Board held registered rights over “Darjeeling” as a geographical indication and certification mark and objected when ITC named an exclusive lounge in its Kolkata hotel the “Darjeeling Lounge”.

The Calcutta High Court refused to grant relief and held that GI protection under the Act attaches to goods, not services, so a hotel lounge selling a hospitality experience fell outside its reach regardless of the name used and the Tea Board's certification mark under Section 75 of the Trade Marks Act, which governs certification marks, gave it the authority to certify that tea originates from Darjeeling, not a general property right in the word “Darjeeling” across unrelated goods or services.

A hotel lounge that served Darjeeling tea among other things, to exclusive guests, was not the kind of use capable of misleading anyone into thinking they were buying, or dealing with, Darjeeling tea itself.

Registering a Geographical Indication (GI) does not grant an absolute monopoly over a name. Section 20(2) of the Geographical Indications of Goods Act, 1999 preserves traditional common law passing off actions rather than establishing a broader statutory monopoly.

The introduction of extended passing off represents a real change in the way the law of passing off functions, since it recognises that commercial goodwill may belong not to a single trader but to a particular group of traders. This change means that a defendant can be prevented from not only falsely asserting that its goods are those of a specific trader but also from making misrepresentations about the nature, origin or qualities associated with a recognised group of goods.

India's situation may most accurately be stated as one of recognition coupled with a limitation. Passing off extended in this way is not a distinct or simpler route to a remedy, rather, it applies the same principles such as goodwill, misrepresentation, and damage to cases where the goodwill belongs to a group rather than to a single trader. The doctrine safeguards a real, shared reputation, but it does not grant anyone an absolute monopoly over a well-known geographical name, a product description, or a commercial expression.

Author is a fourth-year B.A. LL.B student at NMIMS Kirit P. Mehta School of Law, Mumbai. Views are personal.