A crucial question arises when a plaintiff seeks relief for passing off in
relation to a product that has not yet been launched. Can a plaintiff establish
a case for passing off without the existence of prior goodwill in such a
scenario? This article will delve into this intricate issue and provide a legal
analysis of the matter.
Understanding Passing Off:
Passing off is a legal doctrine primarily developed to protect the goodwill or
reputation associated with a particular product or service. It prevents one
party from misrepresenting their goods or services as those of another, leading
to confusion among consumers.
The key elements of a passing off action:
The Pre-Launch Dilemma:
The plaintiff must establish the existence of goodwill or reputation in
connection with their product or service. Goodwill can be thought of as the
valuable asset that a business builds through its marketing efforts and the
satisfaction of its customers.
The plaintiff must prove that the defendant has misrepresented their product or
service in a way that is likely to cause confusion among consumers, making them
believe it is connected with the plaintiff's product or service.
The plaintiff must show that they have suffered or are likely to suffer damage
as a result of the defendant's misrepresentation.
In the scenario described in scenario where the plaintiff is seeking relief for
passing off in relation to a product that is yet to be launched, a critical
issue arises concerning the element of goodwill. Since goodwill is a
prerequisite for a passing off action, can the plaintiff establish this element
when the product is still in development or not yet in the market?
The Plausible Solution:
Pre launch advertisement, Goodwill and misrepresentation:
The Concluding Note:
- Goodwill in Pre-Launch Stage:
Goodwill typically develops over time as a result of a business's activities,
quality of products, and the public's perception of the brand. In the context of
a product that is still in development and not yet in the market, establishing
goodwill can be challenging, but it is not impossible. If the plaintiff can show
that they have taken concrete steps to develop the product, such as investing in
research, development, and marketing, and these efforts have generated a
positive reputation and expectation in the market, this can be considered
goodwill in the making.
- Pre-Launch Advertising and Goodwill:
"Pre-launch advertising and promotional activities can play a crucial role in
building goodwill even before the product is available to consumers. If the
plaintiff can provide evidence that their pre-launch advertising efforts have
created a positive reputation and anticipation among the relevant consumer base,
this can be a strong indicator of goodwill. Consumer expectations, the quality
of the product as presented in advertisements, and the reputation garnered
through these promotions can all contribute to goodwill."
- Misrepresentation and Likelihood of Harm:
In a passing off claim, the plaintiff must also prove that the defendant's
actions constitute misrepresentation. This could include actions that could
potentially confuse consumers or mislead them into believing that the
defendant's product or business is associated with the plaintiff's. If the
plaintiff can demonstrate that the defendant's actions would likely harm their
reputation and goodwill once the product enters the market, this can support a
passing off cllaim, though this can be challenging, especially if the
plaintiff's product is not yet in the market.
While the absence of prior goodwill can be a hurdle, it is not an insurmountable
one. Plaintiffs may still have avenues to establish a passing off claim based on
their prior reputation on the basis of pre launch advertisement and evidence of
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