Infringement and Passing Off of Trademarks under Trademarks Act: Meaning and Difference
Trademark: Basic Context
A trademark is a distinctive sign, symbol, word, or combination used by a business to identify its goods or services and distinguish them from others.
1. Meaning of Trademark Infringement
Trademark infringement occurs when a person or business uses a registered trademark without permission in a way that is likely to cause confusion or deceive the public, leading them to believe the goods or services are associated with the trademark owner.
It involves unauthorized use of an identical or deceptively similar mark on the same or related goods/services.
Infringement is an action against registered trademark rights.
Illustrative Case Example:
XYZ Ltd. v. ABC Enterprises (Hypothetical)
XYZ Ltd. owns a registered trademark “FreshBrew” for coffee.
ABC Enterprises starts selling coffee under the mark “Fresh Brewz.”
The court held this constitutes infringement because of the similarity likely to cause consumer confusion.
2. Meaning of Passing Off
Passing off is an unregistered trademark remedy that protects the goodwill and reputation of a business from being misrepresented by another who tries to “pass off” their goods or services as those of the original business.
It involves misrepresentation, leading the public to believe the goods/services are from the original business.
Protects the business’s goodwill even if the mark is not registered.
Illustrative Case Example:
Smith’s Tea v. Jones Teas (Hypothetical)
Smith’s Tea has built goodwill in selling “Smith’s Finest Tea” though not registered.
Jones Teas packages and sells “Smithe’s Finest Tea” with similar packaging, causing confusion.
The court ruled in favor of Smith’s Tea for passing off, protecting its goodwill.
3. Differences Between Infringement and Passing Off
| Aspect | Trademark Infringement | Passing Off |
|---|---|---|
| Nature of Mark | Registered trademark | Unregistered trademark or goodwill |
| Legal Basis | Statutory right under trademark law | Common law right based on goodwill |
| Requirement | Use of identical or deceptively similar mark on same/similar goods | Misrepresentation causing confusion and damage to goodwill |
| Proof Required | Ownership of valid registered trademark, unauthorized use | Goodwill, misrepresentation, and likelihood of deception |
| Scope of Protection | Only protects registered marks | Protects unregistered marks and business reputation |
| Remedies | Injunction, damages, account of profits | Injunction, damages, and passing off relief |
| Example of Use | Using a registered logo without permission | Imitating product packaging or branding without registration |
4. Summary Table
| Criteria | Infringement | Passing Off |
|---|---|---|
| Registration | Required | Not required |
| Protection basis | Statutory | Common law |
| What is protected | Trademark | Goodwill and reputation |
| Key Element | Unauthorized use of mark | Misrepresentation to deceive |
| Burden of proof | Ownership + unauthorized use | Goodwill + deception + damage |
| Remedies | Injunction, damages | Injunction, damages |
5. Why Both Are Important?
Infringement protects the exclusive rights of registered trademark owners.
Passing off protects businesses that have built goodwill but do not have registered marks.
Together, they ensure comprehensive protection for trademarks.
6. Concluding Notes
A registered trademark owner primarily relies on infringement action.
Where registration is not available or pending, passing off offers protection.
Courts focus on likelihood of confusion, damage to goodwill, and public deception in both cases.
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