Trademark Infringement and Passing Off: What Counts, Defences and Remedies

When another business uses your brand name, logo or something close to it, two legal routes are available: an action for infringement, if your trademark is registered, and an action for passing off, whether or not it is registered. This article explains what each means, what counts as infringement, the defences the other side may raise, and the remedies available.

For the practical steps to take when you find your brand being used, see someone using your brand name: how to take action, step by step.

Infringement and passing off

Point	Infringement	Passing off
Basis	Registered trademark, under the Trade Marks Act, 1999	Goodwill and reputation, under common law
Needs registration?	Yes	No
What you must prove	Your registration, and use by the other party of an identical or deceptively similar mark for the registered or similar goods or services	Goodwill in your mark, misrepresentation by the other party likely to confuse customers, and damage or likely damage
Strength	Easier to prove, because the registration is evidence of your rights	Needs more evidence of reputation and confusion

In practice, a suit often claims both, where the mark is registered.

What counts as infringement

• Using an identical or deceptively similar mark for the same or similar goods or services, in a way likely to cause confusion
• Using a mark identical or similar to a well-known registered mark even for different goods or services, where it takes unfair advantage of or harms its reputation
• Using the mark on goods or packaging, in advertising, on business papers, or online
• Using the registered mark as part of a trade name or company name for the same kind of business
• Applying the mark to labels or packaging knowing it is not authorised

How similarity is judged

• The marks are compared as a whole, the way an ordinary customer with imperfect recollection would see or hear them
• Visual, phonetic and conceptual similarity all count; a change in spelling or a small addition often does not avoid confusion
• The nature of the goods, the class of customers and the trade channels are considered
• For medicines and similar products, courts apply a stricter test because confusion can harm people

Common defences

• Prior use: the other party used the mark continuously from before your use or registration (Section 34)
• Use of own name: bona fide use of one’s own name or the name of one’s place of business (Section 35), not in a misleading way
• Descriptive use: using words honestly to describe the kind, quality or purpose of goods
• Acquiescence: the owner knowingly allowed the use for five years after registration (Section 33)
• Honest concurrent use or the registration being invalid, which may lead to a counter-claim for rectification

Disputes between related businesses are covered in two branches of a family, one brand name.

Remedies

Civil remedies

• Injunction: an order stopping the use, often sought at the start of the case as an interim injunction
• Damages or account of profits: compensation for loss, or the profits the other party made
• Delivery up: destruction or surrender of infringing labels, packaging and goods
• Costs of the proceedings

A suit can generally be filed where the owner carries on business, not only where the infringer is. Most such suits are commercial disputes heard by the commercial court.

Criminal remedies

Falsifying a trademark, falsely applying it and selling goods with a false trademark are offences under the Trade Marks Act, punishable with imprisonment and fine. Criminal complaints are mainly used against counterfeiting.

Registry remedies

• Opposing the other party’s trademark application after it is advertised. See trademark opposition
• Applying to cancel or rectify their registration

Time matters

• Delay weakens a claim for an interim injunction, because it suggests there was no urgency
• Long, knowing tolerance can give the other side a defence of acquiescence
• Limitation periods apply to claims for damages

Frequently asked questions

Can I take action if my brand is not registered?

Yes, through passing off, if you can prove goodwill, misrepresentation and damage. Registration makes enforcement much easier, so file an application as well.

Is using a similar name for a different product infringement?

Usually not, unless the goods are related or your mark is well known. The question is whether customers are likely to be confused or the use takes unfair advantage of your reputation.

Can a company name infringe a trademark?

Yes. Using a registered trademark as part of a company or trade name for similar business can be infringement, and the trademark owner can also seek a change of the company name through the Regional Director within the time allowed.

Do I need to send a notice before going to court?

It is usual and often effective, but not always required, especially when urgent relief is needed.

ചുരുക്കം (Summary in Malayalam)

മറ്റൊരാൾ നിങ്ങളുടെ ബ്രാൻഡ് പേരോ സമാനമായ പേരോ ഉപയോഗിച്ചാൽ രണ്ട് വഴികൾ: രജിസ്റ്റർ ചെയ്ത trademark ആണെങ്കിൽ infringement, രജിസ്റ്റർ ചെയ്തിട്ടില്ലെങ്കിലും passing off. ഉപഭോക്താക്കൾക്ക് ആശയക്കുഴപ്പം ഉണ്ടാകുമോ എന്നതാണ് പ്രധാന പരിശോധന; അക്ഷരങ്ങളിലെ ചെറിയ മാറ്റം രക്ഷയാകില്ല. മുൻകൂട്ടിയുള്ള ഉപയോഗം, സ്വന്തം പേരിന്റെ സത്യസന്ധമായ ഉപയോഗം, acquiescence എന്നിവ എതിർകക്ഷിയുടെ പ്രതിരോധങ്ങളാണ്. Injunction, നഷ്ടപരിഹാരം, വ്യാജ ഉൽപ്പന്നങ്ങൾ നശിപ്പിക്കൽ, ക്രിമിനൽ നടപടി, opposition എന്നിവയാണ് പരിഹാരങ്ങൾ. വൈകാതെ പ്രവർത്തിക്കുക.

This article gives a general overview of infringement and passing off under the Trade Marks Act, 1999 and related law. Outcomes depend on facts and evidence, and procedures change from time to time; for accurate and current requirements, refer to the Act and the rules as amended. The article is not advice on any particular case.