Infringement is a statutory remedy available only to registered trademark owners (S.29). Passing off is a common law remedy protecting unregistered marks based on goodwill. Both address consumer confusion and misappropriation of commercial reputation, but differ in requirements, scope, and burden of proof.
Why: Registration grants statutory presumption of ownership and validity; the registered owner need only prove the defendant's use of an identical/similar mark on identical/similar goods. Passing off requires proving three elements (goodwill, misrepresentation, damage) without any statutory presumption.
Legal Framework
| Section | Subject |
|---|---|
| S.27(1) | No action for infringement of unregistered mark |
| S.27(2) | Passing off rights preserved (common law survives) |
| S.28 | Rights conferred by registration |
| S.29 | Infringement of registered trademark |
| S.30 | Limits/exceptions to infringement |
| S.134 | Suit for infringement: jurisdiction |
| S.135 | Relief in infringement/passing off suits |
| S.103-105 | Criminal penalties for TM offences |
Trademark Infringement (S.29)
When is a registered mark infringed?
| Sub-section | Situation | Requirement |
|---|---|---|
| S.29(1) | Identical mark, identical goods/services | Use in course of trade |
| S.29(2)(a) | Identical mark, similar goods | Likelihood of confusion |
| S.29(2)(b) | Similar mark, identical goods | Likelihood of confusion |
| S.29(2)(c) | Similar mark, similar goods | Likelihood of confusion |
| S.29(3) | Identical/similar mark, dissimilar goods (mark with reputation) | Takes unfair advantage OR is detrimental to distinctive character/repute |
| S.29(4) | Use as trade name or part of trade name | Likelihood of confusion |
| S.29(5) | Use on business papers or in advertising | Unfair advantage or detriment to distinctive character |
| S.29(6) | Verbal use (spoken) | Same test as visual use |
| S.29(7) | Application of mark to packaging/labels | Deemed infringement |
| S.29(8) | Use of mark as domain name | If bad faith use for commercial gain |
| S.29(9) | Dilution | Use of well-known mark that dilutes its distinctive character |
Tests for infringement
| Test | Application |
|---|---|
| Deceptive similarity | Marks compared as a whole; average consumer with imperfect recollection |
| Likelihood of confusion | Would ordinary purchaser be confused about source/origin? |
| Phonetic similarity | Similar sound when spoken (especially relevant for verbal orders) |
| Visual similarity | Overall appearance, structure, layout |
| Conceptual similarity | Similar idea/meaning conveyed (e.g., "Lion" and "Sher" for Hindi market) |
Exceptions/defences to infringement (S.30)
| Defence | Section | Condition |
|---|---|---|
| Honest concurrent use | S.30(1) | Use in accordance with honest practices in trade |
| Descriptive use | S.30(2)(a) | Bona fide use of own name/address, geographic name |
| Indicating characteristics | S.30(2)(b) | Use describing kind, quality, intended purpose |
| Comparative advertising | S.30(1) read with honest practices | Honest comparison; not discrediting |
| Prior use | S.34 | Person who used mark before registration date |
| Exhaustion | S.30(3)-(4) | Goods legitimately put on market by proprietor or with consent |
Passing Off (S.27(2), Common Law)
Classical trinity (per Lord Diplock in Erven Warnink v. Townend, 1979)
| Element | What must be proved |
|---|---|
| Goodwill | Plaintiff has acquired reputation/goodwill in the mark through trade |
| Misrepresentation | Defendant's use of mark/get-up leads public to believe goods are plaintiff's or connected therewith |
| Damage | Plaintiff suffers or is likely to suffer damage (diversion of trade, dilution of goodwill, loss of licensing opportunity) |
Extended passing off
Applies where the shared goodwill of a class of traders is misappropriated (e.g., "Champagne" used for non-French sparkling wine injures all Champagne producers collectively).
Why: Passing off protects the common law right of a trader to the business reputation they have built. It predates statutory trademark law and fills the gap for unregistered marks, trade dress, and get-up.
Remedies
Civil remedies (S.135)
| Remedy | Nature |
|---|---|
| Interim injunction | Restrains infringement pending trial; American Cyanamid principles apply |
| Permanent injunction | Final restraining order after trial |
| Damages OR accounts of profits | Compensatory (plaintiff's loss) OR disgorgement (defendant's gain); cannot claim both |
| Delivery up/destruction | Infringing goods, material, implements delivered to plaintiff or destroyed |
| Anton Piller order | Ex parte search and seizure (evidence preservation) |
| Mareva injunction | Freezing defendant's assets to prevent dissipation |
| Cost of proceedings | Court may award costs |
Criminal remedies (S.103-105)
| Offence | Punishment |
|---|---|
| S.103: Applying false trade marks | Minimum 6 months to 3 years imprisonment + Rs.50,000 to Rs.2,00,000 fine |
| S.104: Selling goods with false trade marks | Same as S.103 |
| S.105: Enhanced penalty for subsequent offence | 1 to 3 years imprisonment + Rs.1,00,000 to Rs.2,00,000 fine |
Illustrations: When Infringement vs Passing Off Applies
Scenario 1 — Pure Infringement (S.29): "Nike" is registered. A local manufacturer stamps "Nike" on counterfeit shoes and sells them at Sarojini Nagar. Nike sues under S.29(1): identical mark + identical goods. Nike need only produce its registration certificate + show defendant's use. No need to prove goodwill or confusion — registration creates presumption.
Scenario 2 — Pure Passing Off (no registration): "Momo Magic" is a popular Delhi street food stall (unregistered mark). Another stall opens as "Momo Magik" 500 metres away with identical branding. No registration exists, so no S.29 suit possible. But the original owner sues for passing off: must prove (a) goodwill in "Momo Magic" in that locality, (b) "Momo Magik" misrepresents a connection, (c) loss of customers (damage).
Scenario 3 — Both Available: "Haldiram's" is registered AND has massive goodwill. A competitor opens "Haldiram Sweets" in a new city. Haldiram's can sue BOTH: (a) S.29 infringement (identical/similar mark, similar goods), AND (b) passing off (goodwill, misrepresentation, damage). Smart litigators file both claims in one suit.
Scenario 4 — S.29(3) Dilution (dissimilar goods): "TATA" is registered for steel. Someone registers "TATA Tailors" for garment stitching (dissimilar goods). Normal S.29(1)/(2) won't work (different goods). But under S.29(3), TATA can succeed because: mark with reputation + use on dissimilar goods + takes unfair advantage of distinctive character. This is anti-dilution.
Recall Check
- What three elements must be proved in a passing off action?
- How does S.29(3) extend infringement protection to marks with reputation beyond similar goods?
- Name three defences to trademark infringement under S.30.
Key Cases
Laxmikant V. Patel v. Chetanbhat Shah (2002) Laxmikant-Patel-v-Chetanbhat-Shah-2002 Issue: Whether passing off can be claimed for a trade name used in a geographically distinct area. Rule: Passing off protects goodwill, not just registered marks. The plaintiff must demonstrate that their name/mark has acquired reputation in the relevant market, and the defendant's use creates confusion. Held: Passing off injunction granted. The Supreme Court held that goodwill extends to areas where the trader has reputation, even without physical presence, and confirmed the three requirements: goodwill, misrepresentation, and damage.
Satyam Infoway v. Sifynet Solutions (2004) Satyam-Infoway-v-Sifynet-Solutions-2004 Issue: Whether registration of a domain name (sifynet.com) identical/similar to plaintiff's trademark (Sify) constitutes passing off. Rule: Domain names function as business identifiers on the internet; the principles of trademark law (including passing off) apply to domain names. Held: Domain names serve the same function as trademarks in cyberspace. Passing off applies. The plaintiff with prior use and reputation prevails over a later domain name registrant acting in bad faith.
Distinctions
| Parameter | Infringement (S.29) | Passing Off (S.27(2)) |
|---|---|---|
| Statutory/common law | Statutory | Common law |
| Registration | Required (pre-condition) | Not required |
| Focus | Violation of statutory right | Protection of goodwill |
| Burden of proof | Lighter (registration = prima facie validity) | Heavier (must prove goodwill, misrepresentation, damage) |
| Defendant's intent | Irrelevant (strict liability) | Relevant (misrepresentation element) |
| Territorial scope | Pan-India (registration covers India) | Limited to area of reputation |
| Well-known marks | S.29(3): dissimilar goods protection | Extended passing off (collective goodwill) |
| Limitation | 3 years from date of infringement | 3 years from knowledge of passing off |
Flashcards
Q: What is the key difference between infringement and passing off? A: Infringement is a statutory remedy requiring registration (S.29); passing off is common law, requires no registration, but demands proof of goodwill, misrepresentation, and damage.
Q: What are the three elements of the classical trinity in passing off? A: Goodwill (reputation in the mark), misrepresentation (defendant's use confuses public), and damage (actual or likely injury to plaintiff).
Q: What does S.29(3) protect? A: Marks with reputation against use on dissimilar goods/services if such use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered mark (anti-dilution).
Q: What is the test for deceptive similarity? A: Marks compared as a whole, from the perspective of an average consumer with imperfect recollection; overall impression matters, not side-by-side comparison.
Q: Can you claim both damages and accounts of profits? A: No. The plaintiff must elect between damages (their loss) and accounts of profits (defendant's gain); cannot claim both (S.135(1)(b)).
Q: What is honest concurrent use (S.30)? A: A defence where the defendant demonstrates bona fide use of a mark in accordance with honest practices in industrial/commercial matters, without intent to take unfair advantage.
Q: What did Satyam Infoway establish about domain names? A: Domain names serve as business identifiers equivalent to trademarks; passing off principles apply to domain name disputes; prior use and reputation prevail over bad-faith registration.
Exam Scenario
"FreshMart" is a registered trademark for grocery delivery in India. A new competitor launches "Fresh-Mart Express" as an app name and registers the domain freshmart-express.in. The competitor argues the addition of "Express" makes it sufficiently different.
Advise FreshMart on: (a) Infringement under S.29(2): whether "Fresh-Mart Express" is deceptively similar to "FreshMart" for identical services. (b) S.29(8): whether domain name registration in bad faith constitutes infringement. (c) Whether passing off can be maintained additionally/alternatively. (d) Remedies available: interim injunction (applying American Cyanamid principles), domain name transfer, damages.
See Also
- IoS-3.3 Beneficial Construction — passing off as a common law remedy interpreted broadly to protect goodwill even without registration; courts apply beneficial construction to protect small traders
- IoS-3.1 Penal Statutes — criminal provisions for trademark infringement (S.103-105 TM Act) are penal statutes; strictly construed in favour of the accused