Difference between Trademark infringement and Passing-off

Trademark infringement and passing off are two legal actions used to protect the rights of businesses, but they differ significantly in several aspects. Here’s a comparison of the two:
1. Type of Remedy
– Infringement: This is a statutory remedy provided under Section 29(1) of the Trade Marks Act, 1999, which deals specifically with registered trademarks.
– Passing Off: A common-law remedy used to protect unregistered trademarks or the goodwill associated with a business, even without formal trademark registration.
2. Registration Requirement
– Infringement: Registration of the trademark is a mandatory requirement for filing an infringement suit.
– Passing Off: No registration is needed for a passing off action. It applies to both registered and unregistered trademarks.
3. Proof and Burden of Proof
– Infringement: The plaintiff must only demonstrate that the infringing mark is deceptively similar to the registered trademark. There is a presumption of confusion, so no further proof of consumer confusion is required.
– Passing Off: In addition to showing deceptive similarity, the plaintiff must prove that the public is confused or deceived by the marks and that the defendant’s actions are likely to cause harm to the plaintiff’s business reputation or goodwill.
4. Jurisdiction
– Infringement: The registered trademark owner can file the suit where they reside, carry on business, or work for gain, as per Section 134 of the Trade Marks Act.
– Passing Off: The usual rules of jurisdiction under Section 20 of the Civil Procedure Code, 1908, apply, meaning the suit can only be filed where the defendant resides, conducts business, or where the cause of action occurred.
5. Criminal Remedies
– Infringement: Prosecution for trademark infringement under criminal law is generally easier due to the statutory nature of the remedy.
– Passing Off: Criminal prosecution for passing off is relatively more difficult as it lacks the statutory framework that infringement enjoys.

Trademark infringement is a statutory remedy that requires registration and is based on the assumption of confusion once similarity is proven. Passing off, on the other hand, is a common law action that can be used without a registered trademark and requires a higher burden of proof to show actual consumer confusion and damage to goodwill. Understanding these differences can help businesses protect their brands more effectively.