What is difference between Infringement and Passing off?

Introduction:

In Intellectual property law, infringement and passing off are two significant concepts used to protect the rights of proprietors of trademarks. Understanding the distinctions between these two legal actions is crucial for businesses and legal practitioners. In the Indian context, both concepts are governed by different statutory frameworks and legal principles.

Infringement:

1. Definition:

Trademark infringement in India refers to the unauthorized use of a trademark that is identical or deceptively similar to a registered trademark in relation to goods or services for which the trademark is registered. This use must cause confusion or deception among the consumers.

2. Statutory Protection:

•  Governed by the Trade Marks Act, 1999
•  Provides protection to registered trademarks.
•  Legal remedies are available under the Act, including injunctions, damages, and account of profits.

3. Criteria for Infringement:

• The plaintiff must prove that they have a registered trademark.
• The defendant's mark must be identical or deceptively similar to the plaintiff's mark.
• The defendant's use of the mark must be in the course of trade and related to the goods/services for which the trademark is registered.
• Likelihood of confusion or deception among the public.

4. Legal Recourse:

• Civil action can be initiated by the owner of the registered trademark.
• Reliefs include interim injunction, permanent injunction, and damages.
• Criminal action can also be initiated under specific circumstances.

Passing Off:

1. Definition:

Passing off is a common law tort used to enforce unregistered trademark rights. It occurs when one person misrepresents their goods or services as those of another, leading to confusion and damage to the goodwill of the original trademark owner.

2. Statutory and Common Law Protection:

• Primarily based on common law principles.
• Recognized under Section 27(2), Section 134(1)(c), and Section 135 of the Trade Marks Act, 1999, which refer to the common law rights.

3. Criteria for Passing Off:

• Goodwill: The plaintiff must establish that their goods or services have acquired goodwill or reputation in the market.
• Misrepresentation: The defendant must have made a misrepresentation to the public, leading them to believe that the defendant's goods or services are those of the plaintiff.
• Damage: The plaintiff must demonstrate that they have suffered or are likely to suffer damage due to the defendant's misrepresentation.

4. Legal Recourse:

•   The plaintiff can file a civil suit for passing off.
•   Reliefs include injunctions, damages, and account of profits.
•   Unlike infringement, passing off does not provide criminal remedies.

Key Differences:

1. Registration:

• Infringement applies to registered trademarks.
• Passing off protects unregistered trademarks based on established goodwill.

2. Legal Basis:

• Infringement is statutory, governed by the Trade Marks Act, 1999.
• Passing off is a common law remedy, though recognized by the Trade Marks Act, 1999.

3. Proof Required:

• In infringement, the primary focus is on the similarity between the marks and the likelihood of confusion.
• In passing off, the plaintiff must prove goodwill, misrepresentation, and damage.

4. Scope of Protection:

• Infringement offers broader protection and easier enforcement due to statutory provisions.
• Passing off requires more comprehensive evidence and is harder to prove.

Conclusion:

In conclusion, while both infringement and passing off aim to protect the rights of trademark owners, they operate under different legal frameworks and principles in India. Infringement offers statutory protection to registered trademarks, making enforcement relatively straightforward. In contrast, passing off relies on common law principles to protect unregistered trademarks, requiring proof of goodwill, misrepresentation, and damage. Understanding these differences is crucial for businesses to effectively safeguard their intellectual property rights in India.