Searching Case Laws & Precedent on Legal Query.....!
Analysing the retrieved Case Laws
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Searching Case Laws & Precedent on Legal Query.....!
Analysing the retrieved Case Laws
Scanned Judgements…!
Even when both infringement and passing off are claimed, courts distinguish the causes of action, with passing off focusing on reputation and deception, and infringement on statutory rights conferred by registration ["Kunj Roller Flour Mills Pvt. Ltd. VS New Ristha Agro India Ltd. - Calcutta"], ["Shree Santosh Family Dhaba, Hyderabad vs Santosh Dhaba Exclusive, Hyderabad - Telangana"].
Analysis and Conclusion:
References:- ["Kunj Roller Flour Mills Pvt. Ltd. VS New Ristha Agro India Ltd. - Calcutta"]- ["SANJEEV KUMAR JUNEJA AND ANOTHER Vs TERRACE PHARMACEUTICALS PVT LTD - Punjab and Haryana"]- ["SHRI KIRIT BHADIADRA Vs WINGS PHARMACEUTICALS PRIVATE LIMITED - Delhi"]- ["Dolphin Mart Private Limited VS Avenue Supermarts Limited - Delhi"]- ["Sazzy Sizzlers Cafe VS Yanki Sizzlers Private Liited - Gujarat"]- ["Indian Express and Commercial Ventures and Projects Private Limited vs Fundamental Hospitality Private Limited - Bombay"]- ["Emami Limited VS Hindustan Unilever Limited - Calcutta"]- ["Shree Santosh Family Dhaba, Hyderabad vs Santosh Dhaba Exclusive, Hyderabad - Telangana"]- ["Mount Everest Breweries Limited VS Excise Commissioner Madhya Pradesh - Madhya Pradesh"]
In the competitive world of business, trademarks are vital assets protecting brand identity. But what happens when two similar marks are both registered? A common question arises: when both marks are registered then why passing off lies not the infringement? This query highlights a key distinction in Indian trademark law between statutory infringement and the common law remedy of passing off. While registration offers strong protections, it doesn't eliminate claims based on prior use and goodwill. This post delves into the nuances, drawing from legal precedents and principles to clarify why passing off remains a powerful tool.
Understanding this difference is crucial for business owners, marketers, and legal professionals navigating trademark disputes. Let's break it down step by step.
Trademark infringement is governed by the Trade Marks Act, 1999, providing exclusive rights to the registered proprietor. Section 28 grants the owner the right to prevent unauthorized use of an identical or deceptively similar mark for similar goods or services. When both parties hold registrations, infringement claims typically focus on violations of these statutory rights, such as unauthorized use post-registration.
However, registration merely recognizes pre-existing common-law rights. It does not create any rights S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385. This means statutory protection acknowledges but does not supersede earlier common law entitlements. In cases like those analyzed under Section 28(3), courts permit joinder of infringement and passing off claims, emphasizing prior use as a pivotal factor Khaitan India Limited VS Khaitar Industries Private Limited - 2023 Supreme(Cal) 1514.
Passing off, a tort rooted in equity, protects a trader's goodwill, reputation, and business from misrepresentation. Its classic elements—goodwill, misrepresentation, and damage—must be proven, regardless of registration status. Passing off is based on the principles of goodwill, misrepresentation, and damage, and can be invoked even when the mark is registered S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385.
Unlike infringement, which hinges on registration, passing off safeguards prior user rights and accumulated reputation. Even if both marks are registered, the mere fact of both prior user and subsequent user being registered proprietors is irrelevant for passing off claims S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385. This independence ensures that a later registrant cannot erode a prior user's established market presence.
For instance, in scenarios where labels show phonetic similarity, courts assess both infringement and passing off using similar evidence, but passing off succeeds where prior goodwill is evident MOHAMED et al. v. MOHAMED UVAIS. If the action, therefore, for infringement fails, the action for passing-off must also fail in some tied cases, yet passing off often stands alone on prior use MOHAMED et al. v. MOHAMED UVAIS.
The core reason passing off persists is its focus on pre-registration goodwill, independent of the Trade Marks Act. Registration grants statutory monopoly but does not eliminate the independent common law remedy of passing off, which remains available to protect prior user rights and goodwill irrespective of registration status S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385.
Infringement is narrowly about statutory breaches, while passing off addresses broader unfair competition. Rights conferred u/s 28, subject to section 27(2) – Passing off action is independent of the Act S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385. Thus, when both marks are registered, a prior user can still claim passing off if the defendant's use misrepresents goods as theirs, causing damage.
Other precedents reinforce this. Courts have noted that when there is a registered trademark covering the goods and passing off lies only when the claim is based on prior use and goodwill DINDAYAL INDUSTRIES LTD. Vs DINDAYAL AYURVED BHAWAN. & ANR. - 2025 Supreme(Online)(Del) 46273. Even with registration, prior continuous use establishes rights, especially for descriptive marks requiring proof of distinctiveness ITC Limited, Rep. , by its Constituted Attorney P. Ramkumar VS Nestle India Limited, Chennai - 2020 Supreme(Mad) 1395.
The Trade Marks Act clarifies that registration is evidentiary, not creative of rights. Registration merely recognizes pre-existing rights but does not create any rights S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385. A subsequent registrant cannot claim immunity if their use deceives consumers relying on the prior user's reputation.
Consider cases where plaintiffs unite infringement and passing off: the court evaluates the factum of prior use of the mark by the plaintiff as the ultimate issue Khaitan India Limited VS Khaitar Industries Private Limited - 2023 Supreme(Cal) 1514. Similarly, in a passing off action, it is against the goods whereas in infringement action, it is in respect of the registered mark ITC Limited, Rep. , by its Constituted Attorney P. Ramkumar VS Nestle India Limited, Chennai - 2020 Supreme(Mad) 1395. This distinction allows passing off to thrive on reputation evidence.
In one ruling, prima facie infringement and passing off were found due to similar trade names and prior usage, upholding injunctions despite defenses of commonality Nrusingha Charan Satapathy VS Dalma Comforts and Entertainment Company Pvt. Ltd. - 2014 Supreme(Ori) 117. Prima facie, this is a case of both infringement of registered Trade mark and an action for passing off Nrusingha Charan Satapathy VS Dalma Comforts and Entertainment Company Pvt. Ltd. - 2014 Supreme(Ori) 117.
Judgments consistently affirm passing off's autonomy:- Registration does not bar passing off; prior goodwill prevails S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385.- Descriptive marks like 'MAGIC MASALA' fail passing off without proven distinctiveness, but prior users bear the burden credibly ITC Limited, Rep. , by its Constituted Attorney P. Ramkumar VS Nestle India Limited, Chennai - 2020 Supreme(Mad) 1395.- Phonetic similarities in names like 'Kaya' warrant injunctions for confusion, blending infringement and passing off MARICO LIMITED VS MADHU GUPTA - 2010 Supreme(Del) 330.- Counterclaims for similar marks are scrutinized, but prior registration and use strengthen positions Kallamkunnu Service Co-Operative Bank VS Ukkens Copra Centre & Oil Mills - 2014 Supreme(Ker) 42.
In the case of a registered mark the cause of action is founded on property which has been infringed, and in the case of passing off plaintiff has to prove the reputation of his goods Kallamkunnu Service Co-Operative Bank VS Ukkens Copra Centre & Oil Mills - 2014 Supreme(Ker) 42. These cases illustrate passing off's role in filling gaps left by registration.
Passing off isn't automatic; plaintiffs must prove all elements. If no goodwill or confusion exists, claims fail—e.g., differing get-ups or services negate deception A1 Shifa Super Speciality Hospital for Piles VS A1 Shifa Hospitals (P) Ltd. - 2011 Supreme(Ker) 842. Registration can bolster defenses under Sections 9 or 30, but prior users retain remedies.
Businesses should document usage meticulously, as prior continuous user establishes rights in descriptive names ITC Limited, Rep. , by its Constituted Attorney P. Ramkumar VS Nestle India Limited, Chennai - 2020 Supreme(Mad) 1395. Courts lean toward injunctions where confusion risks irreparable harm Nrusingha Charan Satapathy VS Dalma Comforts and Entertainment Company Pvt. Ltd. - 2014 Supreme(Ori) 117.
To navigate these waters effectively:- Document Prior Use: Maintain sales records, ads, and market presence to substantiate goodwill.- Monitor Registrations: Challenge similar marks early via oppositions.- Pursue Dual Claims: Combine infringement and passing off for comprehensive protection.- Seek Expert Advice: Consult IP attorneys for tailored strategies.
Registration complements, but does not replace, common law vigilance.
This article provides general insights based on legal principles and is not specific legal advice. Consult a qualified attorney for your situation.
References include key documents like S. Syed Mohideen VS P. Sulochana Bai - 2015 4 Supreme 385, Eicher Goodearth Ltd. VS American Automobiles - 2011 0 Supreme(Del) 1085, MOHAMED et al. v. MOHAMED UVAIS, DINDAYAL INDUSTRIES LTD. Vs DINDAYAL AYURVED BHAWAN. & ANR. - 2025 Supreme(Online)(Del) 46273, Khaitan India Limited VS Khaitar Industries Private Limited - 2023 Supreme(Cal) 1514, ITC Limited, Rep. , by its Constituted Attorney P. Ramkumar VS Nestle India Limited, Chennai - 2020 Supreme(Mad) 1395, Nrusingha Charan Satapathy VS Dalma Comforts and Entertainment Company Pvt. Ltd. - 2014 Supreme(Ori) 117, Kallamkunnu Service Co-Operative Bank VS Ukkens Copra Centre & Oil Mills - 2014 Supreme(Ker) 42, A1 Shifa Super Speciality Hospital for Piles VS A1 Shifa Hospitals (P) Ltd. - 2011 Supreme(Ker) 842, and MARICO LIMITED VS MADHU GUPTA - 2010 Supreme(Del) 330.
#TrademarkLaw, #PassingOff, #IPRights
It is thus apparent that the holder of an unregistered trade mark is not entitled to approach the Court on account of infringement thereof but by virtue of Sub-Section (2) the right of action for passing off remain unaffected. ... or by use of any other marks identical or deceptively similar thereto and also from passing off or to pass off its product by using mark “Rishta” or any other mark deceptively similar the....
Action qua passing off shall remain unaffected. She submits that Section 124 deals with action for infringement of trade mark and not action qua passing off. ... Having already held herein-above that Section 124 deals with suit for infringement and not qua suit for passing off, this Court finds that Section 124 cannot be invoked qua suit for passing off. The cau....
Trade Mark-Action for infringement and passing off-Distinct labels-Alleged phonetic similarity -Burden of proof-Injunction. ... -This action was based on two causes of action, viz., (1) infringement, (2) passing-off. The evidence led to prove both the counts is the same. If the action, therefore, for infringement fails, the action for passing-off must also fail. ... THIS was an action for infr....
Passing off is an action for deceit, involving passing off the goods of one person as those of another, whereas an action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for vindication of its exclusive right to use the trade mark in relation ... Use of the trade mark by the defendant is not necessary for infringement, but....
passing off of the trade mark, then it cannot be said that there is infringement...” ... when there is a registered trademark covering the goods and passing off lies only when the claim is based on prior use and goodwill. ... and passing off. ... and passing off. ... When two marks are identical nothing further needs to be seen in the cases of infringement, but....
Ltd. and Others) and submitted that the plaintiff apart from claiming infringement of its registered trade mark, is also claiming relief on account of passing off. ... He submits that merely because the defendants are the registered proprietors of a particular deceptively similar mark, does not mean that the proprietor losses its rights to initiate infringement and passing off action against the d....
The Plaintiff’s case is therefore of infringement not of the registered trade mark “House of Mandarin” but its abbreviation “HOM” and for passing off in respect of HOM. 14. ... The issue which mainly arose for consideration was as regards the goodwill and reputation of the registered trade marks to be associated with the abbreviation as the action was for infringement of registered acronym as well as passing #HL_ST....
off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. ... While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of....
In an action for infringement, the registered proprietor is not required to show use and reputation of the registered trademark as that is a requirement for passing off. ... The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. ... While an action for passing #H....
The petitioner has also uninterruptedly and exclusively used the mark “Fair & Handsome” for nearly two decades. Mere confusion does not indicate or establish passing off. At the heart of passing off lies deception or its likelihood. ... It is well settled that an action in passing off can succeed even when a claim for infringement has failed. The defences of estoppel and registrability are not ava....
It is enough that the get-up of the plaintiff's goods have become distinctive of them and that there is a probability of confusion between them and the goods of the defendant. Therefore, in a passing off action, it is against the goods whereas in infringement action, it is in respect of the registered mark.
In Rajendra Sahoo vs. Ganeswar Swain (supra) this Court has observed that if there is a likelihood of the offending trade mark invading the proprietary right, a case for temporary injunction is made out. Prima facie, this is a case of both infringement of registered Trade mark and an action for passing off. Under such circumstances, the balance of convenience can be said to be leaning in favour of the plaintiff respondent and if interim protection is not granted the plaintiff would suffer irreparable injury.
In the case of a registered mark the cause of action is founded on property which has been infringed, and in the case of passing off plaintiff has to prove the reputation of his goods and also that it has been assailed by the false or deceitful representation made by defendant over his goods. Where his registered trade mark is imitated an action for infringement lies and where a false and deceitful representation is made expressly or impliedly an action for passing off lies. The defendant has done what is calculated to pass of his goods as those of plaintiff, is the basis o....
But, if the alleged infringement is not in using the exact mark, but something similar, then the test of infringement is the same as in an action for passing off. And the gist of the latter is that the defendant is not entitled to represent his goods as the goods of the plaintiff. But, it is not necessary for the plaintiff to prove that the defendant did this knowingly or with any intent to deceive. The former is a statutory right and if the trade mark of the defendant is identical with the plaintiff’s mark, the court will not enquire whether the infringement is such as is ....
Prima facie the plaintiffs’ registrations appear to be in order. Therefore, the averment made in the plaint with respect to the fact that the plaintiffs carry on their business within the territorial jurisdiction of this Court through its branch office, if accepted, as it ought to be at this stage, would trigger the provisions of Section 134(2) of the Trade Marks Act. In my view, the issue of jurisdiction in the present case is a mixed question of fact and law. The plaintiffs’ action is for both infringement of its registered trade mark as well as for passing off.
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