Passing off, in action for passing off pray of actual deception is not necessary two marks bear an ovrall similarity as would be likely to mislead a person usually dealing with one to accept the other if offered to him, it is enough, National Match Works v. S.T. Karuppanna Nadar, AIR 1979 Mad 157.
An infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In a passing-off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a 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 another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader, Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727.
Though there may not be a right to the exclusive use of a word, the law does recognise a trader's right to prevent others from personating his business by using such descriptive words as would lead the customers to suppose that they are trading with the firm. The principle, on which such a rule rests, is that a person will not be allowed to pass off his goods as those of a rival trader and obtain the benefit which is intended for the rival. Therefore, should a person be found to be passing off his goods, as of the firms, the right of action for damages would not stand affected by the firm not having a trade mark, Durga Dutt Sarma v. Navaratna Pharmaceutical Laboratories, AIR 1962 Ker 156: 1961 Ker LT 1408 (DB).
As act of passing off is an act of deceit and tort every time when such tortuous act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to come to the court by appropriate proceedings, Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company, (1997) 1 SCC 99: AIR 1997 SC 1398: (1997) PTC 98 (SC): (1997) IPLR 231 (SC): 1997 AIPC 165 (SC).
Even on disclaimer, a passing off action lies, Goodfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd., 2000 PTC 365 SC: (1998) 9 SCC 531.
Proof of a fraudulent intention is not a necessary element in a cause of action for passing off, Ciba Geigy Ltd. v. Crosslands Research Laboratories Ltd., 1996 PTC 1 (Del).
An action for passing off against registered user of trade mark is maintainable at the instance of a prior user of the same, similar or identical mark, N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714: 1996 (2) Arb. LR 488 (SC): JT 1996 (7) 555: 1996 (6) Scale 276.
Action for passing off is an action for deceit, for colourable imitation of plaintiff's mark in relation to his goods which have acquired distinctive reputation in the market -- Evidence of actual deceit is not necessary, General Electric Co. of India v. Pyara Singh, AIR 1974 P&H 14.
Onus in a passing off action lies on the plaintiff to establish the existence of the business reputation or goodwill is a relevant mark which he seeks to protect and is likely to suffer on account of passing off, Priya Rubber and Plastic Industries v. Bajrangbali Industries, (2006) PTC (Suppl) (1) 337 (All).
In an infringement action, the plaintiff is not required to prove the reputation of his mark like in a passing-off action where the plaintiff has to prove reputation as well as distinctiveness of his unregistered mark, American Home Products Corporation v. Mac Laboratories Pvt. Ltd., (1986) 1 SCC 465.
It is possible that on the same facts, a suit for passing off may fail but a suit for infringement may succeed because the additions, the get-up and trade-dress may enable a defendant to escape in a passing-off action, S.M. Dyechem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573: 2000 PTC 297 (SC).
A plaintiff can always file a mixed action for infringement and passing off. The causes of action for infringement and passing off are distinct and separate and one of them may fail while the other may succeed on the same evidence, Formica Intternational Ltd. v. Caprihans (India) Pvt. Ltd., AIR 1966 Cal 247: 69 Cal WN 683.
Passing off, itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's, Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145.