Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India
Email id:
Mobile No.: +91 9810081079

The first and the foremost point to be noted for protection of a trademark in India is that the "Registration" of a trademark under the (Indian) Trade Marks Act, 1999 (hereinafter also referred as "Act") is not a condition precedent for seeking protection in India. Accordingly, both registered as well as unregistered trademarks are protectable in India by way of an infringement or passing off action in the court of law.

The registration of trademark under the Trade Marks Act, 1999 as an impediment for other parties in securing registration of a similar or a deceptively similar trademark, under same class of goods/ services. A trademark registration acts as a deterrent for other parties from adopting a similar trademark. Further, an additional remedy of infringement of registered trademark has been provided under the Trade Marks Act, 1999 against the unauthorized use of the trademark by the violators, which helps in getting relief at the time of litigation.

India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions.

Even as per Section 11(3) of the Act, a trademark shall not be registered if its use in India is liable to be prevented by virtue of the law of passing off protecting an unregistered trademark.

In India, rights over the trademark can be acquired by priority in adoption, long, continuous, honest, bonafide and uninterrupted use of the trademark.

A prior user of a trademark is considered supreme than the registered proprietor of the trademark in India. That as per Section 34 of the Act, the registered proprietor of the trademark registration does not have any right to interfere or restrain the use of an identical trademark in relation to goods or services in relation to which that person has continuously used that trademark from the date prior to the use of the registered trademark by the registered proprietor or the date of registration of such trademark. 

The law of passing off can be summarized in one short general proposition-no man may "pass off" his goods as those of another. Further, in the absence of registration of a trademark or the same being under challenge, in India the law of passing off has to be resorted to for resolving various aspects related to violation of any trade mark.

Passing off is a common law right which protects the goodwill and reputation associated with the trademark/ goods of a person and prevents dishonest or improper use of a goodwill by a third person in a trade mark.  The term passing off has not been defined under the Trade Marks Act, 1999, and same is primarily based on "judge made" law of equity. 

It is further important to note that in case of a litigation pertaining to a trademark the statutory right as well as the common law right become important. At times the common law rights may prevail over the rights acquired by registration of a trade mark.

Indian law of passing off is primarily based on following principles:-

  • Honest and Bonafide "Prior Adoption" and user.
  • Long, Continuous, open, concurrent, honest and uninterrupted user.

The Classical Trinity test postulates that the following should be proven: (1) goodwill owned by the claimant (2) misrepresentation by defendant; and (3) the likelihood of damage to that goodwill, in the passing off action, as restated by the United Kingdom House of Lords in the case of Reckitt & Colman Ltd V Borden Inc.1

That in India, the Courts have also accepted the standards stipulated under the Classical Trinity test and for establishing a case for passing of, a party is required to demonstrate the following things in the court:

  • Goodwill and reputation of the trademark;
  • Deception/ confusion in the market; and
  • Damage or likelihood of damage to the Plaintiff2.

It is reiterated that even an unregistered trademark can seek protection of passing off under the Trade Marks Act, 19993.

The difference between the concept of passing off and infringement has been clearly set out in the Indian case of  Rob Mathys India Pvt. Ltd.v. Synthes Ag Chur4, as under:

  • Firstly, nature of remedy in two types of actions is different.
  1. An action for passing off is a Common Law remedy;
  1. An infringement action is a statutory remedy (which is based on a right granted or created by virtue of registration under the Trade Marks Act, 1999).
  • Secondly,
  1. Issue in a passing off action is: "Is the defendant selling goods in the market so marked as to be designed or calculated to lead purchaser to believe that they are the plaintiff's goods?
  1. The issue in an infringement action, on the other hand will be: "Is the defendant using a mark which is the same as or which is colourable imitation of the plaintiff's registered trade mark?
  • Thirdly,
  1. In an infringement action, the statutory protection is absolute in the sense that once a mark is shown to offend, there being imitation phonetically, visually or otherwise to lead the purchaser to believe and purchase goods of another as that of plaintiff, no further evidence of violation of plaintiff's statutory right is necessary.
  1. But in a passing off action, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

That in the case of Neon Laboratories Ltd. vs. Medical Technologies Ltd. and Ors.5, the Hon'ble Supreme Court held that the registered proprietor of a trademark does not have the right to prevent use by another party of an identical or similar mark where that use commenced prior to use or registration by proprietor. The Hon'ble Court also observed that the "first user" rule is a seminal part of the Act.

While deciding the aforesaid case, the Hon'ble Supreme Court also relied upon the following judgments:

  • In the case of N.R. Dongre v. Whirlpool Corporation6, it was held that the worldwide prior user was given preference and predominance over the registered trademark in India.
  • In the case of Milmet Oftho Industries v. Allergan Inc.7, it was held that the marks of pharmaceutical preparation were similar but the prior user worldwide had not registered its mark in India whereas its adversary had done so. This Court approved the grant of an injunction in favour of the prior user.
  • In the case of S. Syed Mohiden v. P. Sulochana Bai8, it was observed that the rights in a passing-off action emanate from common law and not from statutory provisions, nevertheless the prior user's rights will override those of a subsequent user even though it had been accorded registration of its trademark.

In view of the above, it can be concluded that even the unregistered trademarks in India can be protected and there is no mandatory requirement for the registration of the trademark in India for enforcing such common law rights against a violator. The prior adoption and use of the trade are of utmost importance and will supersede over the trademark registration.



2 Beiersdorf A.G. v. Ajay Sukhwani and Anr. 156(2009)DLT83

3 Section 27 (2) of the Trade Marks Act, 1999

4 MANU/DE/0308/1997 

5 MANU/SC/1192/2015

6 (1996) 5 SCC 714 and MANU/SC/1223/1996

7 MANU/SC/0512/2004 AND (2004) 12 SCC 624

8 MANU/SC/0576/2015 and (2015) 7 SCALE 136

Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India

© 2020, Vaish Associates Advocates,
All rights reserved
Advocates, 1st & 11th Floors, Mohan Dev Building 13, Tolstoy Marg New Delhi-110001 (India).

The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are solely of the authors of this article.