Infringement and Passing Off of Trademarks under Trade Marks Act, 1999

A trademark is one of the most valuable intellectual property assets of a business. It represents commercial identity, reputation, quality assurance and consumer trust. In modern trade, where markets are highly competitive and brand recognition directly influences purchasing decisions, legal protection of trademarks becomes essential.

In India, trademark protection is governed by the Trade Marks Act, 1999 along with the Trade Marks Rules. The Act provides both statutory rights and remedies to safeguard trademarks against misuse. 

When a trademark is wrongfully used by another party, the law recognises two principal remedies: infringement and passing off. Though both actions aim to prevent deception and unfair competition, they are distinct in origin, scope and evidentiary requirements.

Concept and Legal Nature of a Trademark

Under Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark is a mark capable of graphical representation and capable of distinguishing the goods or services of one person from those of others.

A trademark may include:

• Words or invented expressions
• Names and signatures
• Logos and symbols
• Letters and numerals
• Shape of goods or packaging
• Combination of colours

The legal nature of a trademark lies in its function as a badge of origin. It indicates that goods or services bearing the mark originate from a particular source. Over time, trademarks acquire goodwill and commercial value. Registration of a trademark grants exclusive statutory rights, while even unregistered trademarks may be protected through common law principles.

What is Trademark Infringement?

Trademark infringement is a statutory remedy provided under Section 29 of the Trade Marks Act, 1999. It arises when a person, without authorisation, uses a mark that is identical or deceptively similar to a registered trademark in the course of trade.

Infringement primarily protects the exclusive rights conferred by registration. Once a trademark is registered, the proprietor obtains the exclusive right to use the mark in relation to the goods or services for which it is registered.

In order to establish infringement, the following elements are generally examined:

• Existence of a Registered Trademark: The plaintiff must prove valid and subsisting registration.
• Use in the Course of Trade: The defendant must be using the mark commercially, such as on goods, packaging, advertisements or business documents.
• Identity or Deceptive Similarity: The impugned mark must be identical or similar enough to cause confusion.
• Likelihood of Confusion: Courts assess whether an average consumer with imperfect recollection would be misled regarding the origin of goods or services.

In cases involving well-known trademarks, infringement may also occur even when similar marks are used for dissimilar goods, if such use takes unfair advantage of or harms the reputation of the registered mark.

What is Passing Off?

Passing off is a common law remedy preserved under Section 27(2) of the Trade Marks Act, 1999. Unlike infringement, passing off does not depend on registration. It protects the goodwill and reputation that a business has built in the market.

Passing off occurs when one party misrepresents goods or services as those of another, thereby causing confusion and damage to the goodwill of the original trader.

Courts apply the “Classic Trinity” test to determine passing off:

• Goodwill: The plaintiff must establish reputation attached to goods or services in the relevant market.
• Misrepresentation: The defendant must have made a representation likely to deceive consumers into believing that goods or services originate from the plaintiff.
• Damage: There must be actual or probable damage to the plaintiff’s goodwill.

Fraudulent intention is not necessary. Even unintentional misrepresentation that leads to consumer confusion may amount to passing off. The focus of passing off is protection of commercial reputation rather than protection of statutory registration.

Difference between Trademark Infringement and Passing Off

Although both infringement and passing off aim to prevent consumer confusion and protect commercial identity, they differ significantly in legal foundation, scope, and evidentiary requirements.

Nature and Source of Right

Trademark infringement is a statutory right created by registration under the Trade Marks Act, 1999. The exclusive right flows directly from registration. Once registered, the proprietor acquires legal recognition and protection under Section 28, and any unauthorised use falling within Section 29 may constitute infringement.

Passing off, in contrast, is a common law remedy preserved under Section 27(2) of the Act. It is based on principles of equity and fairness. The right arises not from registration but from goodwill established in the market. The foundation of passing off lies in preventing unfair competition and commercial dishonesty.

Requirement of Registration

In an infringement action, registration is mandatory. Only the registered proprietor or registered user can initiate a suit for infringement. Without registration, a statutory infringement action cannot be maintained.

Passing off does not require registration. Even an unregistered trademark may be protected if goodwill and reputation can be established. This makes passing off particularly important for small businesses, start-ups, and traders who may not have formal registration but have developed market recognition.

Nature of Right Protected

Infringement primarily protects the exclusive statutory right to use a registered trademark in relation to specific goods or services. The focus is on violation of proprietary rights granted by the Act.

Passing off protects goodwill and reputation. The emphasis is not merely on similarity of marks but on whether the defendant’s conduct amounts to misrepresentation that harms the plaintiff’s business identity.

Burden of Proof

The burden of proof in infringement is comparatively lighter. Once registration and deceptive similarity are shown, the court may presume likelihood of confusion. Proof of actual damage is not always necessary.

In passing off, the burden is heavier. The plaintiff must establish:

• Existence of goodwill in the relevant market
• Misrepresentation by the defendant
• Actual or probable damage

All three elements must be proved for success in a passing off action.

Scope of Protection

Infringement protection is confined to the scope of registration. It applies to the goods or services for which the mark is registered, and in certain cases, to well-known marks even for dissimilar goods.

Passing off has a broader factual scope. It may protect trade dress, packaging, colour combinations, product shape, and overall get-up, even if these are not registered as trademarks. The court examines the overall commercial impression created in the minds of consumers.

Jurisdiction of Courts

Section 134 of the Trade Marks Act provides special jurisdiction for infringement suits. A suit may be filed where the plaintiff resides or carries on business, offering procedural advantage.

Passing off suits are governed by Section 20 of the Code of Civil Procedure, 1908. Jurisdiction is determined by the defendant’s residence or where the cause of action arises. This distinction has practical significance in litigation strategy.

Evidentiary Approach of Courts

In infringement, the court focuses largely on comparison of marks and likelihood of confusion. The analysis is often mark-centric.

In passing off, the enquiry is broader and market-oriented. Courts consider reputation, consumer perception, business history, and surrounding circumstances. The assessment is more evidence-intensive.

Conclusion

Infringement and passing off are two distinct but complementary remedies under Indian trademark law. Infringement safeguards statutory rights granted through registration, while passing off protects the goodwill developed through market presence.

The Trade Marks Act, 1999 provides a comprehensive framework to address misuse of trademarks through civil and criminal remedies. Indian courts adopt a consumer-centric approach and assess likelihood of confusion based on practical market realities.

Understanding the conceptual and procedural differences between infringement and passing off is essential for appreciating how trademark law preserves brand identity, commercial reputation and consumer trust in the marketplace.

Note: This article was originally written by  Srishti Soni [Amity Law School, Jaipur] on 15 January 2021. It was subsequently updated by the LawBhoomi team on 17 February 2026.