What is the difference between passing off and trademark infringement

Question

My brand name is being copied but I never registered it as a trademark, so I want to know if I still have any remedy. What I am unsure about is the procedure — where the application goes, what it costs, and how long passing off india matters usually take. A plain explanation of the steps, in order, would help more than a general answer.

MyVakeel Legal Desk · Accepted Answer

The law that applies to passing off india here is Trade Marks Act, 1999, Section 27 and Trade Marks Act, 1999, Section 29. The detail below matters, because Trade Marks Act, 1999, Section 27 draws the line differently depending on what your documents show.

Section 27(2) of the Trade Marks Act, 1999 expressly preserves the common law right to sue for passing off, which is available to an unregistered proprietor whose goodwill, reputation and prior use in a mark is misrepresented by another trader causing damage — this is the classic 'classic trinity' test recognised by Indian courts.

Section 29 provides the statutory remedy of infringement, available only to a registered proprietor, where an identical or deceptively similar mark is used by an unauthorised person in relation to the same or similar goods or services in a manner likely to cause confusion.

In a passing off action the plaintiff must independently prove goodwill and actual or likely deception in the market, whereas in infringement the registration certificate itself is strong prima facie evidence and the burden of proving no likelihood of confusion largely shifts to the defendant.

Indian courts commonly try infringement and passing off claims together in a composite suit, and a registered proprietor with prior use can often obtain relief on the passing off cause of action alone even if the infringement claim faces a rectification challenge on the register.

What to do next: 1) Document your first use of the mark, invoices, advertisements and market reach; 2) Send a cease-and-desist notice to the infringing party before litigation; 3) File a composite suit for passing off and, if registered, infringement; 4) Seek an interim injunction restraining further use pending trial.

If you are unsure whether your facts fall inside Trade Marks Act, 1999, Section 27, that is worth checking with an advocate before you commit to a route, because switching later costs time. You can post the details on the MyVakeel forum for a practising advocate to review, or book a paid consultation with a Bar Council verified lawyer in intellectual property.