Passing Off vs Infringement: The Real Difference

The passing off vs infringement question turns on one fact, and it is not how strong your brand is. It is whether the mark is on the register. Infringement is a statutory action under Section 29 of the Trade Marks Act 1999, and Section 27(1) says plainly that no person can sue for infringement of an unregistered trade mark. Passing off is the older common law action, expressly saved by Section 27(2), and it is what remains to everybody else.

The practical difference is what you carry into court. In an infringement suit the registration certificate is your case on title, and Section 31 makes registration prima facie evidence of validity. In a passing off suit you prove your right from scratch, through invoices, advertising, turnover and the reputation the mark has actually earned in the market. One is a document led fight. The other is an evidence led one, and it is slower, dearer and less certain at the interim stage where most trademark disputes are really decided.

Registration is not a trump card though, and an unregistered prior user is far from helpless. What follows is where each claim is stronger, the defences that decide real cases, and why most plaints contain both.

What an infringement claim actually requires

Section 29 is a set of graded situations, not one rule.

• Section 29(1) covers use of a mark identical with or deceptively similar to the registered mark, in the course of trade, for the goods or services it is registered for.
• Section 29(2) covers the three combinations that need likelihood of confusion to be shown: identical mark with similar goods, similar mark with identical goods, and similar mark with similar goods.
• Section 29(3) goes further. Where the mark is identical and the goods are identical, the court shall presume that confusion is likely. The plaintiff does not have to prove it.
• Section 29(4) protects a mark with a reputation in India even against dissimilar goods, where use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.
• Section 29(5) catches the defendant who takes the mark into his trade name or the name of his business.
• Sections 29(8) and 29(9) reach advertising that is contrary to honest practices, and spoken use of the words in the mark.

Note what is missing from that list. There is no requirement to prove goodwill, no requirement to prove sales, and in the 29(3) case no requirement to prove confusion. That is the whole commercial value of registration.

What a passing off claim requires

Passing off protects goodwill, not a mark on a register. Courts approach it through three elements, sometimes called the classical trinity.

1. Goodwill or reputation attaching to the goods or services in the mind of the purchasing public, in connection with the get up or name in question. This has to be proved, and proved for India. Indian courts have moved towards requiring goodwill within the country rather than reputation somewhere in the world, though a foreign business can show spillover through advertising, media coverage and trade presence here.
2. Misrepresentation by the defendant, whether deliberate or not, which leads or is likely to lead the public to believe that his goods or services are the plaintiff’s.
3. Damage, actual or likely, to the plaintiff’s goodwill.

Passing off also reaches what a word registration usually misses: trade dress and get up, the shape and colour scheme of packaging, the layout of a shop, a descriptive expression that has acquired secondary meaning, a business name, a domain name. If your product is being copied down to the carton and the colour, but only the word mark is registered, the passing off limb does most of the work.

The two claims side by side

	Infringement	Passing off
Source of the right	Sections 28 and 29, Trade Marks Act 1999	Common law, saved by Section 27(2)
Who can sue	Registered proprietor, and a registered user in the cases the Act allows	Anyone with provable goodwill in the mark
Core proof	The registration, plus similarity	Goodwill, misrepresentation, damage
Scope	The goods and services in the registration, across India	Only where goodwill is actually proved
Confusion	Presumed where mark and goods are identical	Always has to be established
Speed at interim stage	Faster, because title is documentary	Slower, because reputation is contested
Criminal track	Available under Sections 103 to 105	Also available, since falsification is an offence regardless of registration

The defences that decide real cases

Registration wins fewer cases outright than proprietors expect, because the Act itself contains the answers.

Section 34, the prior user saving. A registered proprietor cannot interfere with a person who has used an identical or similar mark continuously from a date earlier than the proprietor’s own use of the mark, or the date of his registration, whichever comes first. This is the provision that keeps the older, unregistered family business alive against a newer registrant, and it is why the first question in any trademark dispute is the date of first use rather than the date of filing.

Section 30, honest use. Descriptive use of a word for the kind, quality, quantity, intended purpose or geographical origin of goods is not infringement, provided the use is in accordance with honest practices and does not take unfair advantage. Section 30(3) also protects resale of goods lawfully put on the market, which matters to distributors and to sellers of genuine second hand stock.

Section 35, own name. Bona fide use by a person of his own name, or the name of his place of business, is protected. Bona fide is the operative word, and courts look hard at a defendant whose surname suddenly became a brand after the plaintiff’s success.

Section 33, acquiescence. Where the proprietor of an earlier mark has knowingly acquiesced for a continuous period of five years in the use of a later registered mark, he loses the right to challenge that registration’s validity or to oppose its use, unless the later registration was obtained in bad faith. Sitting on a known infringement for years has a statutory cost.

Section 28(3), two registrations. Where two persons are each registered proprietors of identical or nearly identical marks, neither has an exclusive right against the other, though both retain their rights against everyone else. In that situation the only surviving claim between them is passing off, which is one of the clearest illustrations of why the two actions are not interchangeable.

There is also Section 124, which lets the court stay a suit where the defendant pleads that the registration is invalid and rectification proceedings are on foot or are allowed to be filed. The grounds open to him are the ones set out in our note on trademark opposition and rectification.

Where the suit is filed and how long you have

Section 134 says a suit for infringement, or for passing off arising out of the use of a registered trade mark, is not to be instituted in any court inferior to a District Court. Section 134(2) then gives the plaintiff a real advantage: he may sue where he actually and voluntarily resides, carries on business or personally works for gain, instead of chasing the defendant to the defendant’s own city.

Here is the nuance most articles miss. That advantage is tied to the Act. A pure passing off suit on an unregistered mark is an ordinary civil suit, and jurisdiction falls back on Section 20 of the Code of Civil Procedure, which usually points to where the defendant resides or where the cause of action arose. For a Jabalpur business with no registration, that can mean litigating in another state. It is one more argument for filing an application even when the brand is small.

Trademark disputes are commercial disputes under the Commercial Courts Act 2015 where the specified value is met, so they go before the commercial court and run on the amended procedure: a written statement within thirty days, extendable to a hard outer limit of one hundred and twenty days, case management hearings and costs that follow the event. Section 12A of that Act requires pre institution mediation unless the plaint contemplates urgent interim relief, which is why almost every trademark plaint does contemplate it. This is litigation and arbitration work, a different discipline from prosecution before the Registry.

On time, a suit is governed by the three year period under the Limitation Act 1963. Continuing use is a continuing wrong, so a fresh cause of action arises with each day of use and the suit itself rarely becomes time barred. Delay still hurts, because an interim injunction is discretionary and a plaintiff who watched a defendant build a business for six years will be asked why.

What you can actually recover

Section 135 gives injunction, and at the plaintiff’s option either damages or an account of profits, together with delivery up of infringing labels and marks. It is one or the other on the money claim, not both. Courts also appoint local commissioners to seize infringing stock, and pass orders against unnamed defendants where counterfeits surface across many small sellers.

The criminal track exists alongside. Applying a false trade mark to goods or services, and selling goods bearing one, are offences under Sections 103 and 104, punishable with imprisonment of not less than six months, extending to three years, and a fine between fifty thousand and two lakh rupees, with enhanced punishment for a second conviction under Section 105. Section 115(4) requires a search and seizure in these cases to be carried out by an officer not below the rank of Deputy Superintendent of Police, who must first obtain the Registrar’s opinion on the facts. That step is skipped often enough to sink good complaints.

Mistakes worth avoiding

• Believing that a company registration with the Registrar of Companies, a GST number or a domain booking gives brand rights. None of them do.
• Using the letter R in a circle on an unregistered mark. Section 107 makes a false representation that a mark is registered an offence, and it hands the defendant a clean point.
• Sending a strong cease and desist letter and then doing nothing for two years, which builds the other side’s acquiescence and delay defence for them.
• Failing to preserve dated evidence of first use. In a passing off case the first invoice is often the most valuable document in the file.
• Suing on the word mark alone when the copying is of the packaging, and pleading no passing off limb at all.

We act in trademark and passing off matters before the district courts at Jabalpur and the Madhya Pradesh High Court, and the scope of that work is described on our trademark and intellectual property practice page. A related note covers copyright registration and ownership, which often runs alongside a brand dispute where artwork has been copied.

This post is general information about the Trade Marks Act 1999 and the law of passing off, not legal advice on any particular dispute. Which claim is worth bringing, and where, depends on your dates of use, your registrations and the evidence you can actually produce. If someone is using your name or your packaging, the contact page is the way to reach us, and please bring the earliest dated documents you have.