Indian trademark law provides two distinct legal remedies for brand owners whose names or marks are being copied by others: trademark infringement (available only to registered trademark owners) and passing off (available to both registered and unregistered mark owners). Understanding the difference between these two remedies — and when each applies — is critical for any business seeking to protect its brand.
Trademark Infringement — The Registered Owner's Remedy
Trademark infringement under Section 29 of the Trade Marks Act, 1999 is available exclusively to the owner of a registered trademark. To establish infringement, the owner must prove:
- They own a registered trademark
- The defendant used the mark in the course of trade
- The defendant's use is identical or deceptively similar to the registered mark
- The use is in relation to identical or similar goods or services
Crucially, the registered trademark owner does not need to prove actual confusion or actual damage. The existence of a registration and the similarity of marks is sufficient. This is a significant procedural advantage.
Passing Off — The Common Law Remedy
Passing off is a common law tort that protects the goodwill and reputation a business has built up through use of a mark, even without registration. The Supreme Court of India has consistently held that passing off is available to businesses that have established goodwill and reputation, regardless of whether their mark is registered.
The legal foundation of passing off in India rests on the principle that no person may pass off their goods or services as those of another. It is a remedy against misrepresentation, not against trademark use per se.
The Three Essential Elements of Passing Off
The Indian courts follow the classic "trinity" test established in the UK case of Reckitt & Colman v. Borden and applied consistently by the Delhi High Court, Bombay High Court and Supreme Court. To succeed in a passing off action, the plaintiff must establish all three elements:
1. Goodwill
The plaintiff must prove that their mark has acquired goodwill — that customers associate the mark with the plaintiff's specific goods or services. Goodwill is typically proved through:
- Duration and extent of use of the mark
- Sales turnover figures under the mark
- Advertising and marketing expenditure
- Media coverage and public recognition
- Awards, certifications or industry recognition
- Customer testimonials and evidence of market reputation
2. Misrepresentation
The plaintiff must prove that the defendant made a misrepresentation — an act that is likely to mislead the public into believing that the defendant's goods or services originate from the plaintiff or are associated with the plaintiff. The misrepresentation need not be intentional — an innocent misrepresentation is sufficient.
3. Damage
The plaintiff must show that the misrepresentation has caused or is likely to cause damage to their goodwill. This includes actual financial loss, loss of customers, damage to reputation or the likelihood of such damage occurring.
⚠️ Key difference from infringement: In a trademark infringement action, you do not need to prove damage or actual confusion — the registration and similarity is enough. In passing off, you must prove all three elements: goodwill, misrepresentation AND damage (or likely damage). This makes passing off actions more evidence-intensive and expensive to litigate.
Infringement vs Passing Off — Side by Side
| Feature | Trademark Infringement | Passing Off |
|---|---|---|
| Requires registration? | Yes — registered TM essential | No — available to unregistered marks |
| Must prove goodwill? | No | Yes — essential element |
| Must prove damage? | No | Yes — actual or likely |
| Must prove confusion? | Similarity is enough | Must show likely deception |
| Strength of case | Stronger — registration is prima facie proof | Weaker — must prove all three elements |
| Available remedies | Injunction, damages, account of profits | Injunction, damages, account of profits |
| Governing law | Trade Marks Act, 1999 (Sec 29) | Common law / tort |
Can Both Be Claimed Together?
Yes — and in practice, most trademark infringement suits in India also plead passing off as an alternative cause of action. This is a prudent litigation strategy because:
- If the registration is challenged or invalidated, passing off provides a backup remedy
- Passing off can cover a broader scope of marks and goods/services than the specific registered classes
- Courts can grant relief on both grounds simultaneously
Prior Use — Can You Defeat a Registered Trademark?
One of the most important applications of passing off in India is in cases where a later party has registered a trademark but the plaintiff has been using the mark longer. Indian courts have consistently held that prior use plus established goodwill can defeat a later registration. The registered trademark holder may have the registration, but the party with prior use and goodwill can succeed in a passing off action and potentially get the registration cancelled on grounds of bad faith. See our guide on trademark squatting →
Conclusion
Passing off is a powerful remedy but a demanding one — it requires building and presenting a comprehensive evidence case about your goodwill. Trademark registration converts this evidentiary burden into a presumption in your favour, making enforcement significantly faster and cheaper. If you are relying on passing off rights, consult an IP specialist to assess the strength of your goodwill evidence before initiating proceedings. Learn about trademark litigation services → or read more on the IP Law Blog.
Facing a passing off or infringement dispute?
Adv. Nikhil Soni handles both passing off suits and trademark infringement matters before the Rajasthan High Court and across India.