In a world where brands are built on identity and reputation, it becomes essential to understand how the law protects these valuable assets. Two key legal concepts in this area are Trademark Infringement and Passing-Off. Though they may seem similar at first glance, they operate under different legal frameworks and have distinct requirements.
This article unpacks the difference between the two in clear, practical terms.
WHAT IS TRADEMARK INFRINGEMENT?
Trademark infringement refers to the unauthorized use of a registered trademark in a manner that is likely to cause confusion about the origin of goods or services. It is a statutory remedy governed by the Trade Marks Act, 1999 in India.
In simple terms, if someone uses a brand name or logo that is identical or deceptively similar to a registered trademark, and this use misleads consumers into thinking the goods or services are associated with the original brand, it constitutes infringement.
Key points:
- Applies only to registered trademarks
- Involves identical or deceptively similar marks
- Focuses on consumer confusion
- The intention of the infringer is generally not relevant
WHAT IS PASSING OFF?
Passing off is a common law remedy, available even when a trademark is not registered.
It aims to prevent one party from misrepresenting their goods or services as being associated with another, thereby riding on the goodwill built by the original business.
To succeed in a passing off action, three elements must typically be proven:
- Goodwill in the mark or trade name
- A misrepresentation by the other party
- Damage caused or likely to be caused to the original business
In practice, this could involve copying packaging, trade dress, or even adopting a confusingly similar name or logo, particularly where one party seeks to benefit from the established reputation of another.
KEY DIFFERENCES AT A GLANCE
| ASPECT | TRADEMARK INFRINGEMENT | TRADEMARK PASSING-OFF |
| Governing statute | Statutory (Trade Marks Act, 1999) | Common Law (Tort of Misrepresentation) |
| Applies when | Trademark is registered | Unregistered and registered marks |
| Need to prove reputation? | Not required | Essential to prove existing goodwill |
| Misrepresentation | Not central to the claim | Central element of the claim |
| Consumer confusion | Must be shown | Must be shown |
WHY IT MATTERS
The distinction between infringement and passing off is not just academic. For businesses, particularly those building a brand from scratch, the availability of passing off as a remedy can offer meaningful protection even before formal trademark registration is completed.
At the same time, registering a trademark strengthens legal rights and simplifies enforcement by removing the need to prove goodwill or reputation — the registration itself serves as proof of ownership.
CONCLUSION
Both infringement and passing off are designed to protect the identity and integrity of a business. While infringement relies on the statutory rights of a registered trademark, passing off protects broader common law rights based on usage and reputation.
Understanding the distinction helps in choosing the appropriate legal strategy and in appreciating the role of both statutory registration and practical brand building in safeguarding a business.
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By Ananthakesavan V