Passing off and Infringement of trademarks

INTRODUCTION:
The trademark is an intangible asset for business. It represents the goodwill of
business which is earned over a period of several years. Thus it becomes utmost
important to protect the most vulnerable intangible asset of business. Now, the
questions arises as to what are the legal ways through which we can stop others
misusing our trademark or how we can stop others duplicating our goods or services.
Here comes a role of trademark infringement or trademark passing off. Let us see in
this article the basic difference between trademark infringement and trademark
passing off. And what are the circumstances where we can take the help of above
legal ways.

What is trademark infringement?

As per section 29(1) of the trademarks act “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”

In simple words, we can say that if a person who is not the actual owner of the
registered trademarks and still continue to use it and continue to sell the goods or
services under the said trademark as if his own,then we can say that such acts
amounts to the trademark infringement.

What is trademark passing off?

Trade mark Act, 1999 does not specifically defines passing off but there are certain
law judgments that enables us to draw its meaning as to whether the it shall be
considered as trademark infringement or trademark passing off. The general
dictionary meaning of passing off says that it’s a kind of tort. The general rule says
that no one is allowed to represent other person’s goods to be his or her. The act
enables those businesses who sell the goods or services in India without having
registered trademark in their name to file a notice of passing off drawing attention of
authorities for seeking protection against the act of trademark passing off. Thus, to
serve the notice of passing off, a person need not to be the registered owner of
trademark. The concept of trademark passing of general in nature and it is much
wider than that of the concept of trademark infringement.

Let us see the basic different between the trademark infringement and
trademark passing off.
Point of difference Infringement Passing off
Constitutional status Defined Section 29(1) of Nowhere defined under

the Trade mark Act,1999 trademark act.General

Trademark registration Mandatory
Onus of proof Plaintiff is only required to
show the deceptive
law applicable.
Not Mandatory
Plaintiff Is required to show some evidenc
on account of confusion.

similarity.
Where to file complaint The registered owner of the The
tradejurisdiction to try
mark can file thethe
suit
matters of passing-off has
where they actually and voluntarily resides or carries his
business or personally work been given to every court
for gain.
which is not inferior to a
District Court.

Conclusion:
The above explanation enables the reader to draw the difference between the
infringement and passing off. The difference is bit minor but much crucial in the
nature if the brand is prominently popular in the market.

OC helps you to serve the notice of infringement as well as passing off for protection
of your brand. If you have received such notices, we can help you to reply them
accordingly.