What is Passing Off ?
When a business tries to imitate another’s brand identity, such as the name, packaging, trade dress, or reputation, without legally owning that identity, it may be guilty of passing off. Even if your trademark is not registered, the law can still protect your brand through this common law principle.
Passing off is a common law remedy used when a business misleads the public by presenting their goods or services as those of another brand, leading to loss of reputation or customers.
What is Trademark Infringement ?
In today’s competitively growing world, your logo, brand name, tagline, or symbol is not only creative, but it’s even legally protected. However, there may arise a situation where someone may start using something similar to your trademark to promote their business.
Trademark infringement means someone is illegally using your registered trademark (or something very close to it) without permission, in a way that causes confusion among consumers.
It’s not only a threat to a brand’s reputation and identity, it may also result in loss of business, consumer trust, and market share.
Key Differences
Passing Off vs Trademark Infringement
| Basis of Difference | Trademark Infringement | Passing Off |
| Trademark Registration | Protects registered trademarks only | Protects unregistered trademarks |
| Legal Source | Statutory right under Trade Marks Act, 1999 (Section 29) | Common law right recognized under judicial decisions |
| Nature of Right | Exclusive right conferred by registration | Right based on prior use and goodwill |
| Proof of Use | Registration itself is proof of ownership and usage | Must prove prior usage, goodwill, and misrepresentation |
| Burden of Proof | Comparatively lower | Relatively higher – must prove all 3 elements |
| Type of Misuse | Direct or indirect use of a registered mark | Any misrepresentation causing confusion or deception |
| Remedies Available | Injunction, damages, account of profits, etc. | Similar remedies, but must prove actual damage |
| Applicable To | Registered brand owners | Any business that has acquired goodwill, even if unregistered |
| Primary Focus | Violation of registered rights | Misrepresentation and consumer confusion |
| Examples | Using the logo of a registered brand like “Nike” | Copying a long-standing, unregistered local brand’s look and name |
Remedies under Trademark Infringement (For Registered Trademarks)
- Injunction: Stop the infringer from using your registered mark.
- Damages or Compensation: Claim losses due to misuse.
- Account of Profits: Recover profits earned by the infringer.
- Destruction of Infringing Goods: Court may order the removal of counterfeit stock.
- Criminal Action: Offender may face up to 3 years imprisonment and/or ₹2 lakh fine under Sections 103–105 of the Trade Marks Act.
Remedies under Passing Off (For Unregistered Trademarks)
- Injunction: Prevent further misrepresentation or confusion.
- Damages: Claim compensation for loss of goodwill or business.
- Proof Required: Must show goodwill, misrepresentation, and damage.
- No Criminal Relief: Passing off is a civil remedy only.
How To Prove Passing Off In India?
Proving a passing off claim requires more than just showing similarity. Indian courts follow the Classical Trinity Test, a three-part rule to determine if someone has unfairly misused your brand identity.
The Classical Trinity Test
- Goodwill or ReputationThe business must have an established name or brand that customers recognise.There should be consistent use of the brand in the market over time.
Evidence like advertisements, client lists, and customer reviews can help prove market presence.
- MisrepresentationThe defendant must have misrepresented their goods or services as those of the plaintiff.This includes the use of a similar name, packaging, logo, or brand identity.
Confusion in the minds of the public or targeted consumers must be reasonably likely.
- Damage or Likely DamageThe misrepresentation must have caused actual loss or the likelihood of future harm.Harm may include drop in sales, damage to brand reputation, or market confusion.
The impact must be serious enough to affect the goodwill or economic value of the business.
Supporting Evidence- Strong documentary evidence are significant for proving Passing Off.
- Customer reviews, testimonials, and social mentions reflecting brand recognition.
- Invoices, product packaging, brochures, or digital assets showing consistent brand use.
- Proof of confusion, such as complaints or diverted customer inquiries.
Why Trademark Registration is Safer Than Relying on Passing Off
- Legal StrengthOfficial recognition: Registered trademarks are legally valid under the Trade Marks Act, 1999.No need to prove goodwill: Unlike passing off, registration doesn’t require proving brand reputation.
Easy enforcement: A registration certificate is enough to initiate legal action.
- Wider ProtectionExclusive rights: Grants full rights to use the mark in your registered category across India.Civil and criminal remedies: Enables both types of legal action for infringement.
Protection from early stages: Even new businesses can enforce rights without proving a long market presence.
- Reduced Legal BurdenNo Trinity Test: You’re not required to prove goodwill, misrepresentation, or damage.Stronger position in court: The infringer carries the burden once you show valid registration.
Prevents legal delays: Faster injunctions and stronger claims with a registered mark.
How EbizFiling Can Help ?
- Trademark Search: We ensure your brand name or logo is available and not already in use.
- Trademark Filing: Complete assistance in preparing and submitting your application accurately.
- Objection Handling: Expert drafting of replies to trademark objections to avoid rejections.
- Trademark Watch: We monitor new filings to alert you of potential infringements.
- Trademark Renewal: Timely tracking and filing to keep your trademark rights active.
Conclusion
In the world of branding, protecting your identity is non-negotiable. While passing off offers some protection, it demands time, proof, and effort to succeed. Trademark registration, on the other hand, puts you in a legally stronger position from day one. Partnering with EbizFiling can help you register, monitor, and safeguard your brand with expert support.
Suggested Read :
International Trademark Assignment
Types of Trademark Assignments
Trademark Renewal vs Trademark Restoration
Benefits of International Trademark Registration
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