Passing off is a legal remedy designed to protect a trader's goodwill and
prevent unfair competition by preventing others from misrepresenting their goods
or services as those of another. In the case at hand, the Plaintiff and
Defendant are both engaged in the business of cycle bells, with similar marks -
BK for the Plaintiff and BK 81 for the Defendant. This article analyzes the
nature and scope of passing off actions, as exemplified by the case before the
Hon'ble Division Bench of the High Court of Delhi.
Goodwill as the Protected Interest:
Passing off actions primarily aim to safeguard a trader's property in their
business goodwill. Goodwill is the valuable asset arising from the reputation
and customer loyalty that a business has built over time. It represents the
intangible value attached to a business and its products or services. The
invasion of this goodwill through misrepresentation is the crux of passing off
The False Suggestion and Reputation Damage:
In the case under consideration, the Defendant's use of the mark BK 81 alongside
the Plaintiff's well-established BK mark created a false suggestion that their
businesses were connected. This misrepresentation had the potential to damage
the reputation and, consequently, the goodwill of the Plaintiff's business.
Customers could be misled into believing that the Defendant's products were
associated with the Plaintiff's, which could lead to confusion and loss of
The Significance of house mark B.K.:
The Plaintiff's use of B.K. as their house name and in connection with their
business is significant. These two letters had become associated with their
products, serving as a symbol of the quality and reliability of their cycle
bells. The fact that the Plaintiff had been in the manufacturing line since 1971
and had used the B.K. mark underscores its importance to their business.
Defendant's Claim of Adopting the Trademark:
The Defendant attempted to defend against the passing off action by claiming
that they adopted the trademark BK from their mother's name. However, the
Hon'ble Division Bench of the High Court rejected this argument. The court
assessed the likelihood of injury to the Plaintiff's business and found that the
Defendant's use of BK 81 was likely to cause confusion and harm the Plaintiff's
The Concluding Note:
In this passing off action, the High Court of Delhi recognized the fundamental
principle that passing off actions protect a trader's property in their business
or goodwill. The false suggestion that the Defendant's business was connected to
the Plaintiff's posed a genuine threat to the Plaintiff's reputation and
goodwill. As a result, the court granted interim relief in the form of an
injunction to prevent further harm to the Plaintiff's business. This case serves
as a valuable illustration of the legal principles underlying passing off
actions and the importance of safeguarding a trader's goodwill in the realm of
business and commerce.
Case Law Discussed:
Case Title: B.K. Engineering Co. Vs Ubhi Enterprises and Anr.
Date of Judgement:12/11/1984
Case No. First Appeal No. 99 of 1984
Neutral Citation No:N.A.
Name of Hon'ble Court: High Court of Delhi
Name of Hon'ble Judge: A.B. Rohtagi and Gian Chand Jain , H J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539