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. I have been reading conflicting things online and I would like to understand what Indian law actually says about this, which Act and Section applies, what the realistic timelines and costs are, and what I should be doing right now to protect my position. If the matter can be resolved without litigation I would prefer that route, but I want to know what my rights are before I agree to anything or sign any document.

MyVakeel Legal Desk · Accepted Answer

What is the difference between passing off and trademark infringement is governed in India primarily by Trade Marks Act, 1999, Section 27 and Trade Marks Act, 1999, Section 29. The short answer is set out below, followed by the practical steps most people in this situation need to take. Read it alongside the specific provisions named, because the exact relief available to you turns on the facts you can prove on paper.

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 the other side has already issued a notice, filed a case or set a deadline, treat the matter as time-sensitive — most remedies under Trade Marks Act, 1999, Section 27 carry limitation periods, and a delay you cannot explain weakens an otherwise strong case. 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 this practice area.