Trademark infringement vs. Passing off: What is the difference and why it matters

Trademark disputes in India frequently revolve around two closely related yet legally distinct causes of action, namely trademark infringement and passing off. While both aim to protect commercial goodwill and prevent consumer deception, their legal foundations, evidentiary burdens, and strategic implications differ materially. Confusion between the two often leads to flawed pleadings, misdirected evidence, and avoidable setbacks in court.

For litigators, in-house counsel, and brand owners alike, clarity on this distinction remains indispensable. This article examines the doctrinal divide between trademark infringement and passing off under Indian law, supported by authoritative Supreme Court jurisprudence, while also explaining why the distinction continues to hold practical relevance in modern brand disputes.

Indian trademark law operates on a dual framework. Statutory rights flow from registration under the Trade Marks Act, 1999, while common law rights arise from prior use and reputation. Trademark infringement belongs to the statutory domain. Passing off draws life from common law principles developed through judicial precedent.

The Supreme Court has consistently recognised goodwill as a proprietary right deserving protection. In Commissioner of Income Tax v. B.C. Srinivasa Setty, goodwill was acknowledged as a valuable commercial asset even though intangible in nature. Trademark law builds upon this premise by providing structured remedies against misuse.

Trademark infringement finds express recognition under Section 29 of the Trade Marks Act, 1999. The provision grants the registered proprietor an exclusive right to use the mark in relation to goods or services for which registration exists.

Infringement occurs when an unauthorised person uses a mark identical or deceptively similar to a registered trademark in a manner likely to cause confusion or association.

In an infringement action, the plaintiff must establish:

1. Valid registration of the trademark

2. Use of an identical or deceptively similar mark by the defendant

3. Use in the course of trade

4. Likelihood of confusion or association

Unlike passing off, proof of reputation or goodwill remains unnecessary once registration stands established.

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, the Supreme Court clarified the distinction between infringement and passing off. The Court held infringement to be a statutory remedy where the focus remains on similarity of marks rather than overall misrepresentation.

The Court observed that once similarity reaches a level likely to deceive, infringement stands established irrespective of additional factors.

Passing off protects traders against misrepresentation resulting in injury to commercial goodwill. The remedy operates independently of statutory registration and is rooted in equitable principles aimed at preventing unfair competition and consumer deception.

The Supreme Court of India articulated the essential elements of a passing off action in Wander Ltd. v. Antox India P. Ltd., while drawing guidance from the House of Lords decision in Reckitt and Colman Products Ltd. v. Borden Inc. The Court recognised the classical trinity governing passing off actions, which requires a plaintiff to establish:

1. Existence of goodwill or reputation attached to the goods or services

2. Misrepresentation by the defendant leading or likely to lead the public to believe that the defendant’s goods or services originate from the plaintiff

3. Likelihood of damage to the plaintiff’s goodwill as a consequence of such misrepresentation

Each of these elements must be independently satisfied, failing which the passing off claim cannot succeed.

Passing off actions demand extensive factual evidence. Plaintiffs often rely on sales figures, advertising expenditure, consumer surveys, market presence, and duration of use. The enquiry extends beyond visual similarity and examines overall trade dress, packaging, get-up, and surrounding circumstances.

Registration versus Use: Trademark infringement requires registration. Passing off relies on prior and continuous use. This distinction assumes critical importance in start-up driven markets where brand adoption precedes formal registration.

Scope of protection: Infringement protection remains confined to goods or services covered under registration. Passing off protection extends across allied and cognate goods, provided that reputation crosses market boundaries.

Burden of proof: Infringement offers procedural ease. Registration serves as prima facie proof of title. Passing off imposes a heavier evidentiary burden upon the claimant.

Defences available: Statutory defences under Section 30 apply primarily to infringement claims. Passing off defences revolve around the absence of misrepresentation or lack of goodwill.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court laid down authoritative factors for assessing deceptive similarity, especially in pharmaceutical trademarks. The Court emphasised public interest and held that phonetic similarity alone could suffice where consumer safety stands at risk.

The ruling applies with equal force to infringement and passing off claims, reinforcing the judiciary’s consumer-centric approach.

Indian trademark law accords primacy to prior use over registration. This principle found clear affirmation in S. Syed Mohideen v. P. Sulochana Bai. The Supreme Court held that a prior user could successfully maintain a passing off action even against a registered proprietor.

The judgment underscores why passing off continues to matter despite registration regimes.

In Neon Laboratories Ltd. v. Medical Technologies Ltd, the Supreme Court declined interim relief due to prolonged inaction by the plaintiff. The Court held that equitable relief demands vigilance.

The ruling carries particular relevance for passing off claims where delay may erode equitable protection more readily than statutory infringement actions.

Litigation strategy: Choice between infringement and passing off shapes pleadings, evidence, interim relief prospects, and trial timelines. Experienced litigators often plead both causes of action where registration exists, yet courts assess each independently.

Digital and cross border branding: In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., the Supreme Court extended trademark principles to domain names. The ruling reinforced the continuing relevance of passing off in digital commerce.

Commercial valuation: Investors and acquirers scrutinise trademark portfolios. Registered marks strengthen valuation. Passing off rights remain harder to quantify yet play a decisive role during early stage brand disputes.

From a practical standpoint, brand owners would be well advised to adopt a proactive and structured approach to trademark protection. Securing registration at an early stage continues to be a prudent safeguard, particularly in an increasingly crowded marketplace. At the same time, maintaining consistent and contemporaneous records evidencing use of the mark plays a critical role in fortifying passing off claims, should disputes arise. Courts remain cautious in extending equitable relief where rights holders have delayed enforcement without sufficient justification, making timely action essential. Where circumstances permit, pursuing both infringement and passing off as parallel causes of action calls for careful and precise drafting, ensuring that the distinct legal requirements of each are properly addressed. Ultimately, judicial assessment in trademark disputes continues to be guided by consumer perception, with the likelihood of confusion remaining the fulcrum of adjudication.

Trademark infringement and passing off may appear similar at first glance, yet they operate within distinct legal universes. One flows from statute, the other from equity. One simplifies enforcement, the other rewards reputation. Courts continue to recognise both as complementary tools rather than competing remedies.

For practitioners, understanding this distinction transcends academic interest. It determines litigation success, shapes brand protection strategies, and preserves commercial goodwill in an increasingly crowded marketplace.

About the author: Divyang Chandan is the Head of Rent Control and IP practice at Chandan & Chandan.

Disclaimer: The opinions expressed in this article are those of the author(s). The opinions presented do not necessarily reflect the views of Bar & Bench.

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