When a rival adopts a confusingly similar name, the brand owner’s lawyer reaches for two distinct causes of action. Infringement is statutory: it enforces the exclusive right that registration confers under the Trade Marks Act, 1999. Passing off is older than the register: it protects the goodwill a trader has actually built, against misrepresentation that damages it. The two overlap in most suits, but they are not the same claim wearing two labels — and the differences matter precisely in the hard cases.
Different foundations
Infringement vindicates a statutory monopoly. Registration under the Trade Marks Act, 1999 confers, by Section 28, the exclusive right to use the mark in relation to the registered goods and services; Section 29 catalogues the ways that right is invaded — identical marks on identical goods, deceptively similar marks with a likelihood of confusion, and use that takes unfair advantage of or damages a reputed mark even on dissimilar goods. The plaintiff’s title is the registration certificate, presumed valid under Section 31.
Passing off vindicates a trading reality. No certificate is needed and none suffices: the claimant must establish the classical trinity — goodwill in the mark or get-up, misrepresentation by the defendant likely to deceive the public into believing its goods or services are the claimant’s, and resulting damage. The action polices honesty in trade, which is why it reaches subject matter the register may not: trade dress, packaging, business styles, and marks whose registration is pending or refused.
The comparison that matters
| Dimension | Infringement | Passing off |
|---|---|---|
| Source of right | Registration (Sections 27(1), 28) | Goodwill built by use (Section 27(2) preserves the action) |
| What plaintiff proves | Registration + use of an identical/deceptively similar mark within Section 29 | Goodwill + misrepresentation + damage (or its likelihood) |
| Defendant’s added honesty defences | Statutory defences (Sections 30, 34, 35 — descriptive use, prior user, own name) | Honest and sufficient differentiation can itself defeat misrepresentation |
| Forum | Section 134: suit where the registered proprietor resides or carries on business; commercial courts regime applies | Ordinary CPC rules via Section 20 — generally the defendant’s forum or where the cause of action arises (unless combined with infringement in one suit) |
| Reach | Limited to registered goods/services, extended for reputed marks by Section 29(4) | Reaches any field where the goodwill extends and deception is likely |
| Vulnerability | Stands or falls with the registration (rectification risk) | Independent of the register; survives even against registered defendants on prior use |
Why suits plead both
Practice notes
Plead the two actions separately and completely: the passing off paragraphs must stand on goodwill, misrepresentation and damage even if every registration paragraph were struck out.
Evidence of use wins both actions: invoices from the earliest years, advertising spend, distributor networks and sales figures should be collected and exhibited systematically, not summarised.
Defendants should audit the register and the marketplace at once — a rectification petition and a prior-use defence are different levers, and the choice between differentiation and contest is best made before the written statement.
Remember limitation’s practical edge: delay rarely bars a continuing wrong, but it corrodes the interim injunction, which is where most trademark litigation is really decided.
Frequently Asked Questions
Can an unregistered brand sue at all?
Yes — in passing off. Section 27(2) of the Trade Marks Act expressly preserves the action for passing off goods or services as those of another. What the unregistered proprietor cannot do is sue for infringement, which Section 27(1) reserves to registered marks. The price of non-registration is a heavier evidentiary burden: goodwill, misrepresentation and damage must all be proved.
What does registration actually buy?
Section 28 confers the exclusive right to use the mark for the registered goods or services and to sue for infringement; Section 31 makes registration prima facie evidence of validity; and Section 134 allows the registered proprietor to sue where it carries on business — a significant forum advantage over the ordinary rule that the plaintiff goes to the defendant’s court. Section 29 then defines infringement, including identity/similarity of marks and goods, and dilution of marks with reputation.
Can passing off succeed where infringement fails — or defeat a registration?
Yes. Passing off is independent of the register: a prior user with goodwill can succeed against a later registered proprietor, because registration does not extinguish earlier rights — Section 34 protects vested prior-user rights, and Section 27(2) keeps the common-law action alive. Conversely, infringement can succeed without proof of actual confusion where the statutory comparison is satisfied.
What interim relief is available?
The same toolkit for both: interim injunctions under Order XXXIX CPC in a commercial suit, appointment of local commissioners to seize infringing stock, and final relief of injunction, damages or account of profits with delivery-up under Section 135. The real interlocutory battle is over prima facie case — where the differences in what each action requires show up immediately.