DIFFERENCE BETWEEN TRADEMARK INFRINGEMENT AND PASSING OFF

Introduction:

The term ‘trademark’ refers to any word, phrase or symbol which is used to denote that the goods on which such words or symbols are present belong to a particular company. In today’s world when the number of companies are growing, protecting the trademarks of already established businesses is crucial for maintaining their reputation. There are two important legal remedies available to the business in case of deceptive or unauthorised use of trademarks, they are trademark infringement and passing off . Though both serve similar purposes and look similar on the surface they are different from each other. 

Trademark Infringement :

Trademark infringement occurs when a person uses the brand name or logo which is the same or is deceptively similar to any registered trademark in such a way that it makes the customers believe that the goods or services are rendered by the original brand. Section 27(1) of the Trademarks Act, 1999 provides the right to a registered trademark to file a suit for infringement .

Example: McDonald’s is a famous eatery famous for selling burgers. The name as well as the symbol (big yellow colour ‘M’) is registered. Someone opens a new shop to sell burgers that also has a big yellow “M” and even calls it ‘McRonald’s’. This is called trademark infringement .

This concept is given under Section 29 of the Trademarks Act, 1999. The essential components to constitute trademark infringement as per this Section are as follows: 

• The plaintiff’s mark must be registered .
• The mark used by the defendant must be identical to or deceptively similar to the plaintiff’s mark .
• The defendant should be using the mark in such a way so as to be likely to be taken as being used as a trademark.
• The defendant should be using the trademark in an unauthorised manner .

Passing Off :

Passing off is not a statutory remedy; rather, it is a common law remedy . It means that the remedy of passing off is not mentioned in any statute but is recognised by the courts . This remedy is available to unregistered trademarks as well. It is basically based on the principle that no person can pass off the goods or services of another as his own .

The essential elements needed in order to constitute a case of passing off are as follows :

• There must be some goodwill or reputation associated with the trademark.
• There must be misrepresentation by the defendant .
• The original owner of the trademark should have suffered or should be likely to suffer damage due to the misrepresentation of the defendant . 

Example: There is a very famous chocolate called the ChocoFun chocolate which comes in a red and gold wrapper with a happy bear on it. One day, someone makes a chocolate that looks almost the same, same red and gold wrapper, same happy bear, but it’s called ChocoYum. It’s not made by the real ChocoFun company, but it looks so much like it that people think it is. Even though ChocoFun didn’t register their name, the other company is trying to fool people into thinking their chocolate is the same . That’s called passing off and it’s also not allowed.

Differences Between Infringement And Passing Off :

The difference between infringement and passing off has been explained below,

Infringement	Passing Off
It is a statutory remedy.	It is a common law remedy.
It is only applicable for registered trademarks.	It is applicable for both registered as well as unregistered trademarks.
The plaintiff need not establish that have an existing reputation to claim this remedy, infringement is enough.	The plaintiff should establish that they already have an existing reputation to claim this remedy.
It is sufficient that the marks are deceptively similar to claim this remedy; there is no need of further proof.	The plaintiff has to prove that the marks create confusion in the minds of buyers. Deceptive similarity of the marks alone is not sufficient to claim the remedy.
The plaintiff can bring a suit for infringement even if he has never used the mark; it is sufficient if he has registered the mark.	The plaintiff has to prove that he has been using the mark and it has thereby gained reputation.

Conclusion

Understanding the difference between trademark infringement and passing off is important because each offers different types of legal protection depending on whether a trademark is registered or not . Knowing the distinction helps businesses choose the right legal remedy and better protect their brand identity .

Sources-

• India Code – Section 27(1) of the Trademarks Act, 1999
• India Code – Section 29 of the Trademarks Act, 1999
• Legal Glossary – Deceit (The LawGist)

 

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WRITTEN BY: SHIVANI

EDITED BY: NANCY SHARMA

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