Introduction

Passing off refers to the act of misrepresenting one’s goods or services as those of another, typically through the use of a similar trade name, logo, packaging, or design. This practice can cause confusion among consumers and result in unfair competition.

This article explores the concept of passing off in designs, its legal implications, and how it is regulated. It also discusses the requirements for proving a passing off claim in the context of design infringement and the role of the courts in safeguarding creators rights.

The Basis of Passing Off in Design Law

Passing off occurs when one party’s design is used to falsely represent their product as being the design of another, typically a competitor. Unlike design infringement, which specifically involves the illegal use of a registered design, passing off is based on common law principles. In passing off cases, the party asserting the claim does not need to prove that their design is registered or formally protected by law. Instead, the focus is on the distinctiveness of the design and the likelihood of confusion among consumers.

While the common law remedy to passing off was originally applicable to trademarks, such remedies are now available for design right owners also. In 2011, the Full Bench of the Delhi High Court observed that dual protection might exist under both design law and trade mark law, particularly in the case of shapes. The Court clarified that while simultaneous registration as both a trade mark and a Design was not allowed, there was no restriction on using a registered design as a trade mark. Consequently, the Court concluded that dual protection under both Design law and Trade Mark law was permissible. In Smithkline Beecham Plc. v. Hindustan Lever Ltd.[1]¹,, the Delhi High Court ruled that the action of passing off a design is clearly recognized under the Designs Act, 2000.

In Micolube India Limited v. Rakesh Kumar & Ors. [2]², the Delhi High Court observed that to establish a passing off action, a Plaintiff must satisfy all three probanda of the so-called Classical Trinity:

That the goods or services in question had established goodwill or reputation associated with the Plaintiff;
That the Defendant had made a misrepresentation that led consumers to believe the Defendant’s goods were those of the Plaintiff. It was not a valid defense in a passing off case that the misrepresentation was unintentional or lacked fraudulent intent;
That the Defendant’s actions caused or were likely to cause damage.

Therefore, to succeed in a passing off claim related to a design, a plaintiff must demonstrate:

Goodwill/Reputation: The claimant’s design must have established goodwill, being recognized in the market as distinctive and linked to their brand or business.
Misrepresentation: The defendant must have misrepresented their product, intentionally or unintentionally, leading consumers to associate it with the claimant’s design.
Likelihood of Confusion: The defendant’s design must be likely to confuse consumers into believing their product comes from the same source as the claimant’s.
Damage: The claimant must show that the misrepresentation has caused or could cause harm to their business, reputation, or sales.

Legal Framework and Protection for Designs

Having established the foundational principles of passing off in the context of design law, it is now important to see how these concepts are enforced and safeguarded under the Indian legal system.

In India, a composite suit for design infringement and passing off is now permitted. In Carlsberg Breweries a/s v Som Distilleries and Breweries Ltd. [3]³, the Special Bench of Delhi High Court ruled that, due to the common questions of law and fact, the causes for infringement of a registered design and passing off against the same defendant can be combined in a single suit to avoid multiple proceedings.

Further, the rights of an owner of a design can be protected by:

Registered Design Rights: A registered design provides exclusive rights to the product’s visual appearance, covering elements like shape, color, and texture.
Trade Mark Law: Design elements, like the shape of a bottle or mobile phone, can also be protected under trade mark law if they are associated with a specific brand, even without formal registration.
Unfair Competition Law: Passing off is part of unfair competition law, which prevents businesses from exploiting distinctive features of others’ products to gain an unfair advantage.

Case Law and Judicial Precedents

Over the years, several important cases have shaped the legal landscape of passing off in designs in India. Courts have generally been willing to protect designers’ rights, especially when the design in question has gained significant market recognition.

In Whirlpool Of India Ltd vs Videocon Industries Ltd [4]⁴, the court held that the design of two machines after judged solely by the eye, were substantially similar, establishing a case of design infringement and passing off.

In Havells India Limited vs Panasonic Life Solutions India Pvt Ltd. [5]⁵ the court observed that no customer with average intelligence and imperfect recollection would be deceived or confused into buying the Defendant’s fans under an impression that they were the Plaintiff’s goods. Hence, the misrepresentation ingredient for passing off was not satisfied. Failing to show misrepresentation means no passing off.

In M/s Crocs Inc USA v Bata India Ltd & Others [6]⁶, the court observed that a passing off action was maintainable along with an action for infringement of a registered design and granted the limited interim relief to the plaintiff on the ground of passing off.

Strategies for Applicant: Preventing and Addressing Passing Off in Designs

The law on passing off is complicated. Sometimes, it is difficult to establish that customer with average intelligence and imperfect recollection would be deceived or confused into buying the product in question To avoid infringing on design rights or committing passing off, businesses should:

Procure design registration (valid for 10 + 5 years).
Use and promote the design extensively to establish it as a brand in the public mind.
Monitor competitors and initiate legal action if infringement or passing off is detected.
Once design protection lapses after 15 years, consider trademark registration or rely on the passing off remedy if you have sufficient goodwill.

Conclusion

Passing off in designs is a critical concept in protecting the intellectual property and business interests of creators. It ensures that businesses and individuals who invest in creating distinctive and recognizable designs are not exploited by competitors attempting to deceive the public.

While passing off claims do not require registration, the plaintiff must demonstrate the reputation of their design, that the defendant’s misrepresentation is likely to cause confusion, and that damage has occurred or is likely. Through effective design registration, monitoring of the marketplace, and swift legal action, businesses can protect their valuable designs from passing off and ensure that their creative works are properly safeguarded. In a competitive market, preventing passing off is essential for fostering innovation, ensuring fair competition, and protecting consumers from being misled.