What Is Passing Off and How Is It Different From Infringement?

Passing off vs infringement: the short answer

Infringement is a right created by statute. When a trademark is registered under the Trade Marks Act 1999, Section 28 gives the owner the exclusive right to use it for the registered goods or services, and Section 29 says when another person's use infringes that right. The owner does not have to prove that customers were actually fooled. If the rival uses an identical or deceptively similar mark for the same goods, the court presumes confusion in many situations.

Passing off is older than the Act. It comes from the common law rule that no trader may sell his goods as the goods of another. Section 27(1) says nobody can sue to stop infringement of an unregistered trademark, but Section 27(2) immediately preserves the right to sue for passing off. So the unregistered owner is not left without a remedy. He simply has a heavier burden of proof.

The practical difference is this. In an infringement case the registration certificate does a lot of the work. In a passing off case you have to build your reputation from scratch with evidence: sales figures, advertising, invoices, customer recognition. The question in passing off vs infringement is rarely which one is better. It is which one you are entitled to, and usually the answer is both.

What passing off protects: goodwill, not the mark

Goodwill passing off claims rest on a simple idea: your business has built an attraction in the market, and that attraction belongs to you. The mark, name or packaging is only the badge that tells customers where the goods come from. When a rival uses a similar badge so that buyers think they are getting your product, he is taking the benefit of goodwill he did not earn.

Because passing off protects goodwill, it reaches things a registration often does not. The shape of a bottle, the colour scheme of a packet, the layout of a label, a trading name, a shop front, a domain name and even a distinctive style of advertising can all be protected if customers associate them with you. The Supreme Court held in Satyam Infoway v. Sifynet Solutions (2004) that domain names are protected by the law of passing off, which is why cybersquatting cases are often argued on this footing.

Passing off is also not limited to the same goods. If your reputation is strong enough, a rival using your name for unrelated products can still mislead people into thinking there is a connection. The Delhi High Court restrained the use of the name Benz on undergarments in Daimler Benz v. Hybo Hindustan (1994) on this reasoning. The weaker or newer your reputation, the closer the goods need to be for the claim to succeed.

What infringement protects: the registration

Infringement protects the registered mark as it appears on the register, for the goods and services in the classes listed. Under Section 29(1) to (3), use of an identical or deceptively similar mark for identical or similar goods is infringement where it is likely to cause confusion, and confusion is presumed where both the mark and the goods are identical. Section 29(4) goes further for marks with a reputation in India: use on unrelated goods can infringe if it takes unfair advantage of, or harms, the distinctive character or reputation of the registered mark.

The Supreme Court explained the difference long ago in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) and Ruston and Hornsby v. Zamindara Engineering (1970). In infringement, once the court finds the marks are deceptively similar, the defendant cannot escape by adding his own name, a different colour or a line saying the product is his. In passing off, those added features can matter, because the question is whether the overall get-up misleads buyers.

Registration also brings procedural advantages. Section 31 makes the registration prima facie evidence of validity. The criminal provisions on falsifying and falsely applying trade marks are easier to use with a registered mark. And for infringement of a registered mark, Section 134(2) lets the owner sue where he carries on business, which can bring the case to Delhi even when the infringer sits in another State, subject to the limits discussed below.

Passing off and infringement side by side

The law behind each claim

The three things you must prove in a passing off case

Courts often call it the classic trinity, from the English Jif Lemon case (Reckitt and Colman v. Borden, 1990), and Indian courts apply it routinely. First, goodwill: your goods or services have a reputation in the market under the name, mark or get-up in question. Second, misrepresentation: the defendant's use leads or is likely to lead the public to believe his goods are yours or connected to you. Third, damage: you have suffered or are likely to suffer harm, through diverted sales, loss of reputation or loss of control over your brand.

Goodwill is proved with documents, not adjectives. The court wants to see when you started, where you sell, how much you have sold year by year and what you have spent on promotion. A chartered accountant's certificate of turnover, a sample of invoices from each year and copies of advertisements usually form the core. Goodwill can be local. A sweet shop known across West Delhi has goodwill there even if nobody in Chennai has heard of it.

Misrepresentation does not require proof that the defendant meant to deceive, although dishonest adoption makes the court far less sympathetic to him. The test is the average customer with imperfect recollection, not a careful lawyer comparing two packets side by side. For cheap, everyday goods bought quickly, a smaller resemblance is enough. For costly items bought after thought, the court expects more.

Damage is usually inferred once goodwill and misrepresentation are shown. You do not need to prove a specific lost sale to get an injunction. For damages, however, you need figures, and that is where most plaintiffs are weakest.

How much protection does an unregistered trademark really have?

An unregistered trademark is protected, but only as far as you can prove reputation. That is the honest answer. A business that has used a name for ten years with steady sales and a following can stop a copier as effectively through passing off as a registered owner can through infringement. A business that started six months ago, with little advertising, will struggle.

Unregistered owners face three practical weaknesses. They cannot rely on the presumption of confusion that helps in infringement. They usually have to sue where the defendant lives or where the copying happens, rather than at their own place of business. And they are exposed if a copier registers the mark first and then claims ownership, which happens more often than people expect.

The answer is to file for registration as soon as you can, and keep a dated record of use in the meantime. The guide on protecting a trademark before going to court explains the filing and record keeping steps. A pending application does not let you sue for infringement, but it shows the court you treat the mark as yours, and once the registration comes through you can amend the suit to add the infringement claim.

Why most Delhi High Court suits plead both claims

A registered owner almost always adds passing off to an infringement claim. The reason is coverage. A word mark registration protects the word, but the copier may have changed the word slightly while copying your yellow packet, your font and your mascot exactly. Infringement may be arguable on the word. Passing off is strong on the whole look. Pleading both means the court can grant relief on whichever ground is clearer at the interim stage.

Passing off also helps where the registration is in a different class, where the registration is under challenge in a rectification petition, or where the defendant has his own registration. Courts commonly stay the infringement part under Section 124 when validity is challenged, but the passing off claim does not depend on validity, so the injunction application can still be heard. If a rival's registration is the problem, the guide on removing a wrongly registered trademark explains how to attack it.

Infringement and passing off suits involving brands are commercial disputes under the Commercial Courts Act 2015, so the Commercial Division or the Intellectual Property Division hears them in the High Court, and commercial courts hear them at the district level. Our page on trademark infringement and passing off suits in Delhi covers what the firm handles in these cases.

Prior user against a registered owner

The person who used a mark first in the market usually wins, even against someone who registered it first. That surprises many clients who assume the registration certificate settles everything. Section 34 protects a prior user against a registered owner, and in S. Syed Mohideen v. P. Sulochana Bai the Supreme Court held that registration does not take away the passing off rights of a prior user. Neon Laboratories v. Medical Technologies (2016) applied the same principle in favour of a prior user against a later registration.

To use this protection, the prior use must be real, continuous and provable. Occasional sales, a dormant name revived after years, or claims backed only by an affidavit with no invoices rarely persuade the court. Gaps in use weaken the claim, and so does a long silence after learning of the rival.

If someone has registered your brand, the usual plan is a passing off suit with an application for injunction, combined with a rectification petition seeking removal of the registration. Our page on trademark rectification and cancellation explains that side. Doing both together prevents the rival from using his certificate as a weapon while the suit is pending.

Reputation from abroad: when does it count in India?

A foreign brand cannot sue for passing off in India merely because it is famous elsewhere. In Toyota v. Prius Auto Industries, the Supreme Court refused relief to Toyota over the name Prius, because the evidence did not show that Indian customers knew the Prius car when the Indian company adopted the name for auto parts. The test is goodwill in India at the time the defendant started using the mark.

That goodwill can come from spillover reputation: Indian travellers, online sales to Indian customers, Indian media coverage, social media following in India, or advertising that reaches Indian audiences. Evidence dated before the defendant's adoption carries the weight. Evidence created after the dispute began counts for little.

For Indian businesses, the same principle works in reverse. A trader from Lucknow who has never sold in Delhi cannot easily stop a Delhi trader on goodwill alone, unless the reputation has spread through online sales, wholesale channels or advertising.

Which court hears a passing off or infringement suit, and where you can file

In Delhi, suits valued above Rs 2 crore go to the original side of the Delhi High Court, where its Intellectual Property Division hears trademark matters; suits below that go to the district commercial courts. The pecuniary limit is Rs 2 crore at present; a proposal to raise it is pending, so check the current limit. Valuation in IP suits is largely the plaintiff's own estimate of the relief, but it must be honest and the court fee follows it. The guides on the Intellectual Property Division and on Delhi High Court pecuniary jurisdiction explain both points.

Territorial jurisdiction is where passing off and infringement differ sharply. Section 134(2) lets a registered owner sue for infringement where he resides or carries on business. That extra forum does not apply to a pure passing off claim. For passing off, the ordinary rule in Section 20 CPC applies: you sue where the defendant resides or works, or where the cause of action arose, which includes places where the copied goods are sold or offered, including online sales into Delhi that are actually targeted at Delhi buyers. In Indian Performing Rights Society v. Sanjay Dalia (2015), the Supreme Court also limited the use of branch offices to drag defendants to a distant forum.

Before filing, Section 12A of the Commercial Courts Act requires pre-institution mediation unless the suit seeks urgent interim relief. In Yamini Manohar v. T.K.D. Keerthi (2023), the Supreme Court said the court can look at whether the claim of urgency is genuine. In copying cases urgency is usually real, but a plaintiff who sat on the matter for a year will find that argument harder.

How a passing off or infringement suit runs in Delhi High Court

The broad stages are the same for both claims. Timings vary with the court's board and the defendant's conduct.

1. Collect evidence quietly

   Gather proof of your use, turnover and advertising, and make test purchases of the rival's goods with bills. Photograph shelves and save online listings with dates. Do this before any notice, because copiers often change or hide stock once warned.

2. Decide on notice or direct suit

   A cease and desist notice suits honest mistakes and small overlaps. Where counterfeiting or deliberate copying is involved, filing directly with an urgent application is usually wiser, and the court accepts that notice would defeat the purpose.

3. File the plaint and interim application

   The plaint pleads infringement, passing off or both, with a statement of truth and documents. An application under Order 39 Rules 1 and 2 CPC seeks a temporary injunction, often with a request for a local commissioner to visit the defendant's premises.

4. First hearing and ad interim order

   If the case is strong and urgent, the court may grant an ex parte ad interim injunction till the next date. The guide on ex parte injunctions in trademark cases explains what that involves and the duty of full disclosure.

5. Pleadings and admission or denial

   The defendant files a written statement, normally within 30 days, extendable up to 120 days under the Original Side Rules. Parties then admit or deny each other's documents, often before a Joint Registrar.

6. Interim injunction decided

   The court hears both sides on whether the injunction should continue till the end of the suit. Many cases settle here, with the defendant agreeing to change the name or packaging.

7. Trial, judgment and appeal

   If not settled, issues are framed and evidence is recorded, often through a local commissioner. A commercial appeal under Section 13 of the Commercial Courts Act lies against the final judgment and against many interim orders, within 60 days.

Typical time and cost at each stage

Evidence to collect for a passing off claim

A practical tip on proving use

When Advocate B.K. Singh prepares a passing off suit, the first document he asks for is the oldest dated invoice that shows the mark, followed by one invoice from every year since. A neat bundle of year-wise invoices often persuades a judge faster than a thick affidavit of claims. Gaps in the record are the first thing the other side attacks, so find them yourself before filing.

Keep the originals safe and do not alter old records to make them look better. Defendants routinely ask for originals at the admission and denial stage, and a doctored invoice can destroy an otherwise good case.

What usually goes wrong

• Waiting too long. A year of silence after learning of the copier weakens the claim of urgency and invites the argument that you accepted the rival's use.
• Weak proof of goodwill. Affidavits that say the brand is famous, without invoices and turnover figures, rarely get an interim injunction in a passing off case.
• Over-valuing or under-valuing the suit. Valuation decides the forum and the court fee. An inflated value to reach the High Court can be questioned, and an unrealistically low one limits damages.
• Hiding facts. Not telling the court about the defendant's registration, an earlier settlement or your own delay can lead to the order being vacated with costs.
• Suing in the wrong place. Treating a pure passing off claim as if Section 134(2) applies can end in the plaint being returned, costing months.

If you are the defendant in a passing off case

Obey any interim order first. Breach of an injunction is treated seriously and can lead to attachment of property and detention under Order 39 Rule 2A CPC. Then look at the plaint with care. The common defences are that the plaintiff has no real goodwill in the relevant market, that the words are descriptive or common to the trade, that your get-up as a whole is different, that you used the name first, or that the plaintiff knew of your use for years and did nothing.

Advocate B.K. Singh's practical advice to defendants is to gather their own earliest dated invoices on the first day, before drafting anything. If your use predates the plaintiff's, that single fact can turn the case. If it does not, an early offer to change the packaging often costs far less than a contested trial and a damages order.

Many defendants also file their own trademark applications or seek rectification of the plaintiff's registration. These steps need care, because filing an application for a mark you know belongs to someone else is itself evidence of bad faith.

What to do this week

If you are the brand owner, gather your earliest invoices and year-wise sales, make one or two test purchases, and save dated screenshots of any online listings. File a trademark application if you have not. Do not send a threatening message on WhatsApp or social media; it alerts the copier and can be used against you. The guide on how long a trademark suit takes in Delhi High Court will help you plan the time and budget.

If you are the defendant, comply with any order, collect your own proof of use, and take advice before replying to a notice. Our page on trademark and passing off cases in the Delhi High Court sets out how such suits are defended as well as filed. A well judged reply at the notice stage often avoids a suit altogether. For advice on your papers or updates on the law, contact Advocate B.K. Singh.