Infringement and passing off

Infringement is done when you actually use other's trademark or quite similar trademark and run your business accordingly.

But passing off, as the name suggest, happens when the trasaction is done showing to the other party that ytou are the lawful owner of the said trademark and on th said belief, the other party trusts on you.

Action for Passing Off is a common law remedy, in substance being an action for deceit, that is passing off by a person of his own goods as those of another. it is a remedy available to the owner of an unregistered trademark who obtains reputation & goodwill by long user of the same. Whereas, Action for Infringement is a statutory remedy, available to a person who acquires right in a trademark on its registration. The basic thing being that when an unregistered Trademark is being infringed, the remedy to the owner is passing off as provided in S.27 of the Trade Marks Act, 1999. And for a registered trademark owner the remedy is action for infringement u/s. 29 of the Act.

For a passing off action registration of trademark is not relevant. It is based on property in goodwill acquired by use of the mark. On the other hand infringement is based on statutory right acquired by registration of trademark. In case of a passing off action, the defendant's goods need not be same as that of the plaintiff, they may be allied or even different. In case of an action for infringement, the defendant's use of the offending mark may be in respect of the goods for which the mark is registered or similar goods. In the claims of infringement based on well known trade marks, the barrier of goods stands further diluted in view of the provisions of the Trade Marks Act, 1999. Another difference between the two is that in passing off action identity or similarity of marks is not sufficient, there must also be likelihood of confusion. But in case of infringement if the marks are identical or similar no further proof is required.

In the case Durga Dutt Sharma V. N.P. Laboratories , a Supreme Court judgment, the difference between the two has been laid. It was held that " An action for passing off is a Common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark."

I would like tp point out that it is not as that action agaonst pasing off is only available to unregistered trademark instead it it can be availed for registered trademarks also.

But action against infringement is only limited to registered trademarks.