Difference Between Passing Off and Infringement of a Trademark

The main difference between passing off and infringement of a trademark is their registration status. Registered trademarks in India are protected under the trademark law, while unregistered ones rely on the passing off framework. A Trademark is a design or visual that represents a brand’s identity and can include a name, logo, symbol, slogan, or color combination. 

Trademark copying and infringement cases are more common in the business world than you think. Many businesses try to copy another brand’s identity to promote or increase their market sales. However, a trademark as a legally protected entity prevents such cases. Even if a trademark is not legally registered, it can still be legally protected under certain circumstances. This makes passing off and infringement of trademarks hard for rivals and preserves your brand identity. 

This blog will detail the difference between passing off and infringement of trademark and clearly define both of their scopes & limitations. 

What is Trademark Infringement Under Indian Law? 

Trademark infringement occurs when a business uses an already registered or a deceptively similar trademark without permission. Such unauthorized use creates confusion among customers about the source of the good or service. In India, trademark infringement is governed under the Trademark Act, 1999. 

Key features to identify trademark infringement in India are: 

• Copying a registered trademark. 
• Use of an identical or similar trademark. 
• Using the trademark for similar or related goods & services.
• Creates a likelihood of confusion, along with actual confusion.

Under Section 29 of the Trademark Act 1999, the trademark owner is granted statutory rights to take action in court against infringement. The law provides many remedies for the trademark owner who files a lawsuit against another party for infringement. 

This includes injunctive relief, monetary damages, and an accounting for profits made from the infringing acts. Likewise, trademark infringement can also lead to a criminal charge, as stated in Sections 103 to 105 of the Act.

What is Passing Off of a Trademark in India?

Passing off in trademark law is a legal action against unauthorized use of unregistered trademarks. The plaintiff in a passing off action must prove all of the following elements to take legal action against unauthorized use:

• Goodwill or Reputation of their brand
• Misrepresentation by the defendant
• Actual or likely damage of passing off the trademark

The Trademark Act 1999 does not provide a statutory definition for passing off. Indian courts recognize and apply passing off principles through judicial precedents. They use the Classical Trinity Test to establish passing off of a trademark. Under this framework, the plaintiff must prove the goodwill of the brand along with other relevant proof to claim legal rights over the trademark. 

Note: Even registered trademark owners can initiate passing off actions when misuse goes beyond the registered class of goods or services.

Key Differences Between Passing Off and Trademark Infringement: Detailed Breakdown

While both frameworks protect trademarks, they operate under different legal guidelines and apply in unique situations. The table below clearly defines the differences between passing off and infringement of a trademark:

Feature	Trademark Infringement	Passing Off
Legal Basis	Statutory right under the Trade Marks Act, 1999	Common law remedy developed through court decisions
Registration Requirement	Requires a registered trademark	No registration required
Nature of Right	Exclusive legal right granted by statute	Right arising from business goodwill and reputation
Proof of Goodwill	Not required	It must be clearly proven by the plaintiff
Misrepresentation	Presumed that if the mark is identical or deceptively similar	Must be specifically established
Burden of Proof	Lower, due to statutory protection	Higher, as all elements must be proven
Test Applied by Courts	Likelihood of consumer confusion	Classical Trinity Test (goodwill, misrepresentation, damage)
Scope of Protection	Limited to goods or services covered under registration	Extends to unregistered marks based on market reputation
Remedies Available	Civil and criminal remedies are available	Civil remedies only
Examples of Remedies	Injunction, damages, account of profits, criminal penalties	Injunction, damages, account of profits
Purpose	Protects the statutory rights of registered trademark owners	Protects business goodwill from unfair competition

To summarize, trademark infringement protects registered marks through legal rights, while passing off safeguards unregistered marks based on goodwill.

Remedies for Infringement of Trademark and Passing Off in India 

The Indian Trademark Framework provides businesses protection against both infringement and passing off. The scope may differ based on the registration status of the brand, but legal provisions remain intact for both cases. 

Remedies for Infringement of Trademark in India 

Trademark Infringement under the Trademark Act 1999 provides both civil and criminal legal provisions for the protection of trademarks. It includes: 

• Injunctions: An injunction is a court order that immediately stops the unauthorized use of a trademark. It helps prevent further damage to the brand while the case is ongoing.
• Account of Profits: The court may order the infringer to hand over the profits earned from using the trademark to the rightful owner. This ensures the infringer does not benefit from wrongful use.
• Damages: The court can award compensation for financial losses suffered by the trademark owner. This covers loss of sales, reputation, and business opportunities.
• Destruction of Infringing Goods: The court can order the complete removal or destruction of infringing goods to prevent further distribution or use in the market.
• Criminal Liability: Under Sections 103 to 105, willful trademark infringement can lead to fines and imprisonment. These penalties act as a strong deterrent against deliberate misuse.

Remedies for Passing off a Trademark in India 

The remedies for passing off are similar to those for trademark infringement. However, they are primarily civil and focus on preventing unfair competition. It includes actions like injunctions, accounts of profits, damages, and destruction of infringing goods. 

Criminal liabilities are generally not part of remedies for passing off a trademark in India.

Legal Framework Governing Remedies for Trademark Protection 

The Trade Marks Act, 1999, states the guidelines for protecting trademarks against infringement and passing off. The legal frameworks include: 

• Section 27 (2): A business can bring a claim regardless of whether the trademark is registered.
• Section 134: This section describes where you can file a lawsuit for both trademark infringement and passing off.
• Section 135: This section describes the remedies available for trademark infringement and passing off.

Together, these provisions ensure that businesses can protect their trademarks effectively, whether registered or unregistered.

Popular Case of Trademark Infringement and Passing Off from India

The following landmark cases show how Indian law handles trademark infringement and passing off cases:  

1. Passing off Case: Satyam Infoway Ltd. vs Sifynet Solutions (2004)

In this case, Satyam Infoway (SIFY) sued Sifynet Solutions. The reason was the use of domain names like “siffy.net” and “siffynet.net,” claiming they were confusingly similar. The court held that domain names can act as brand identifiers and carry goodwill. Applying the classic passing off test, the court restrained the defendant from using the disputed names. 

This case confirmed that passing off applies to domain names as well.

2. Trademark Infringement: Cadbury India Ltd. vs Neeraj Food Products (2007) 

This case was a popular trademark infringement example in India. Cadbury sued Neeraj Food Products for using similar wrapping for chocolates that resembled Cadbury’s Dairy Milk packaging. The court held that the packaging design is very similar to Cadbury’s and can cause confusion among consumers. Hence, it granted injunctions to stop Neeraj Food Products from using that particular packaging. 

Trademark copying and misrepresentation cases are taken very seriously in India and are considered a serious legal offence. These examples provide valid proof for the phenomenon. 

How Trademark Registration is Safer Than Relying on Passing Off? 

Trademark Registration provides much stronger protection than relying on passing off. It offers legal rights under the Trademark Act 1999, which makes it less complicated to protect in court. Here’s what a registered trademark provides that the passing off framework does not: 

• Exclusive Statutory Rights: A registered trademark provides exclusive legal rights to the owner of a trademark. 
• Easy Enforcement: A trademark registration is enough to prove a claim over a particular trademark in court. 
• Larger Protection Band: Provides both civil and criminal actions against infringement. 
• Reduce Legal Burden: Trademark registration reduces complications for the plaintiff in court and saves time & legal costs. 

Although passing off offers a certain degree of protection, trademark registration provides more effective protection. Trademark registration establishes a clear legal ownership of a trademark and provides greater remedies and rights to business owners. 

Trademark infringement and passing off are governed differently under Indian law, but both aim to prevent brand misuse. While passing off protects unregistered marks based on goodwill, trademark registration provides stronger and more predictable legal protection. For long-term brand security, trademark registration remains the safer choice.

To ensure complete protection of your brand effectively, RegisterKaro offers end-to-end trademark registration and legal support. Contact RegisterKaro today and take the right step toward protecting your brand identity.

---