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Trademark Infringement v. Passing Off

Trademark infringement and passing off are both related to the violation of rights of a trademark owner, however, there are certain differences between the two.
Written by:
Shivi Gupta
Published on
24-Jul-18

A business requires a unique identity to stand out among its competitors in the market. This identity comes from its distinctive brand name, logo, words, etc. This distinctive feature of a business gives it an exclusive identity, or Intellectual Property on the basis of which the business is able to attract more consumers. However, this identity must be protected from other businesses who may use it for their wrongful gains- a Trademark gives this protection!

What is a Trademark?

The word ‘trademark’ denotes the assignment of a distinctive mark to goods or services of a business with the view to identify their origin and distinguish such goods or services from others. Such recognition vanishes the confusion which is likely to develop in the minds of consumers with regard which helps companies to keep a check on prevailing competition in the market.

A trademark as the name suggests is a distinctive mark under which certain exclusive rights are given to a registered trader, manufacturer or service provider. It is a valuable asset for a business as it protects the exclusive rights of the owner and distinguishes the products or services of one company from that of the other. There is a need to register a trademark under the Trademarks Act, 1999 as it confers numerous rights on the registered owner with regards to the use, licensing or sale of such trademark as well as take action on the ground of ‘trademark infringement’.

A trademark in India is registered by the Controller General of Patents Designs and Trademarks under the Trademark Act, 1999. The validity of a trademark is for 10 years, which can be renewed by filing an application. Upon renewal, the trademark is valid for another 10 years. 

 

Which Trademarks cannot be registered? 

A trademark which is deceptively similar or identical to an already registered and existing trademark or a trademark for which a registration application is already filed, cannot be registered. Any trademark that is offensive, or is a geographical name, common name, trade word, abbreviation, etc. cannot be registered as a trademark as well. 

Which Documents are required for Trademark Registration?

A trademark application in India must be filed with certain documents attached. These documents are:  1) Identity proof of the trademark owner, like Aadhar card, Election ID card, PAN card, etc. 2) Proof of a registered business, such as GST number, PAN card, etc. 3) The Logo and tagline that is to be registered. 4) Form-48 and an affidavit signed by the trademark owner.

Trademark Infringement and Passing Off

Trademark Infringement means when any person, other than the owner of the registered trademark, uses the mark without authorization in the course of trade and in relation to goods or services which are similar or deceptively similar to the goods or services for which the trademark is registered.

Passing off is based on the principle that nobody is allowed to sell his goods as goods of another person. It is a common law remedy which is available in case of unregistered trademarks. However, the protection of the unregistered trademarks is limited.

Trademark infringement and passing off are both related to the violation of trademark owner’s rights, however, there are certain differences between the two. The following table explains how trademark infringement and passing off differ from each other:

Trademark Infringement Passing Off
It is a statutory remedy. It is a common law remedy.
For an action to be infringement, registration of such trademark is relevant. For an action to be passing off, registration of the trademark is irrelevant.
It protects the exclusive rights of the registered owner. It protects the limited interest of the unregistered owner.
It is to be shown that the infringing mark is similar or deceptively similar to the registered mark in relation to similar goods/services, and the likelihood of ‘confusion in the minds of general public’ is presumed. Besides proving similar or deceptively similar marks, the likelihood of ‘confusion in minds of the general public’ is also to be proved. A suit for relief can be instituted under Section 134 of the Trademarks Act, 1999. Section 20 of the Code of Civil Procedure, 1908 shall be applied to decide the jurisdiction of the Court for filing the suit.  

Legal Action against Trademark Infringement and Passing Off in India

A trademark owner can take a legal action against someone for infringement or passing off if there is any reasonable chance that the trade name used can cause confusion or mislead the customers due to a similarity between the 2 names. 

Under Section 134 of the Trademarks Act, 1999, a suit for trademark violation amounting to infringement can be filed before the District Court or High Court within the local limits of whose jurisdiction, the person instituting such suit resides, carries on business, or personally works for gain.

However, a suit for passing off governed by Section 20 of the Code of Civil Procedure, 1908, can be filed before the District Court, within the local limits of whose jurisdiction the defendant is residing, working for gain or carrying on its business, or where the cause of action has arisen. Hence, jurisdiction in case of passing off is. 

To take a legal action against any form of trademark violation, a trademark owner must consult a trademark lawyer in India. MyAdvo connects you with the best IPR lawyer- email us at info@myadvo.in or call us at +919811782573.