10 March 2020

Difference Between Passing Off And Infringement Of The Trade Mark

Khurana and Khurana


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A Trade mark may be defined as a lawfully protected abstract, word, symbol, color, mark, slogan or a mixture of those related to an organization or a selected product that differentiates it from the others accessible within the market.
India Intellectual Property
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A Trade mark may be defined as a lawfully protected abstract, word, symbol, color, mark, slogan or a mixture of those related to an organization or a selected product that differentiates it from the others accessible within the market

Before we dive into how Trade Marks Act, 1999, defines infringement and passing off it is only fair to understand the meaning of these terms in layman's language. According to the Cambridge dictionary, infringement could be defined as an action that breaks a rule, law, etc.and the synonym of it would be breach, violation. Now, let us look at the definition of passing off. According to the Cambridge dictionary, passing off could be defined as the illegal act of selling a product that is similar to one that another company has legally protected by a trade mark and the synonym of it would be... well, there are no synonyms.

We know, you must be thinking that you were here to know the legal difference between the two and why did you end up getting an English class instead. Hang in there, we promise we have our reasons. So, when you read these definitions mentioned above, you get a clear picture that these two terms are different from one another. So, next time when someone asks you if there's any difference between the two, you will at least be able to tell them a clear 'yes'. Now, let us prepare you to support your argument. Lawyer, much?


Section 29 of the Trade mark Act, 1999 states about various aspects concerning the infringement as given in S.29(1) that A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Other subsections of the provision outlined that in course of the use of the trade mark, it is said to be infringing the rights of other company due to use of identical or similar trade mark using for marketing of alike goods and services or use of a deceptively similar or identical trade mark for any other kind of goods and services. It is further given in the Sub Section (9) of this provision that the infringement can also be done by the spoken use of the words as well as by the visuals.

Passing Off:

Trade mark Act, 1999 does not have an explicit provision that specifically describes passing off but there are n no. of common law judgments that lets the courts draw its meaning as to whether the infringement of trade mark done is in such a way that the mark is not only deceptively similar to the trade mark of that other company but itis also capable of creating or is creating confusion for the customers, which ultimately results in damage for business of the company.

The fundamental principle behind the tort of passing off is that "A man is not to sell his goods under the pretense that they are the goods of another man" (Perry v Truefitt (1842)).

In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of Delhi explained the difference between passing off action and an action for trade mark infringement as under:

  • An action for trade mark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy.
  • The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of an action for infringement while it is not a necessity of an action for passing off.
  • In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit, outer covering and other written marks on the goods originate from a different source than that of a registered proprietor's trade mark. The liability of the defendant in such a case may be absolute. However, in case of passing off of trade mark, the defendant may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the plaintiff's goods.
  • In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit.

In a recent case of S. Syed Mohideen v. P. SulochanaBai, the Apex Court of the country stated that passing off right is a wider remedy than that of infringement. This is because the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as the business of another person. The said action of deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act.

S. No. Infringement Passing off
1. Type of remedy The statutory remedy under Section 29(1) of the Trade mark Act, 1999 Common-Law remedy
2. Registration It is a pre-requisite It is not required
3. Proof Plaintiff is only required to show deceptive similarity, as there is a presumption of confusion Apart from proving deceptive similarity, the Plaintiff is also required to prove confusion in public and the likelihood of injury to the plaintiff's goodwill
4. Jurisdiction The registered proprietor or registered user of the trade mark can institute the suit where they actually and voluntarily resides or carries his business or personally work for gain Section 20 of the Civil Procedure Code, 1908 would apply

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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