Infringement is a statutory action that only the proprietor of a registered trade mark can bring. Passing off is a common law action available to anyone who has built goodwill under a mark, registered or not. That single line is the whole of the passing off vs infringement in India question at the doorstep, and Section 27 of the Trade Marks Act 1999 states both halves of it: sub-section (1) says no person may sue to prevent or recover damages for infringement of an unregistered trade mark, and sub-section (2) says nothing in the Act affects rights of action for passing off.
What follows from that split is not academic. The two actions have different ingredients, different defences, different evidence, and, most awkwardly for plaintiffs, different rules about where you are allowed to sue. Most commercial disputes over a brand name are pleaded as both at once, and the pleading that treats them as interchangeable usually comes apart at the interim injunction stage.
Passing off vs infringement in India: what each action actually requires
An infringement action is essentially a comparison exercise. Section 29 of the Trade Marks Act 1999 sets out when a registered mark is infringed, including use of an identical or deceptively similar mark in the course of trade in relation to the registered goods or services. Where the mark and the goods are both identical, Section 29(3) directs the court to presume a likelihood of confusion. The plaintiff does not have to prove reputation, and does not have to prove that anyone was actually deceived.
A passing off action requires the classical trinity. In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited, decided by the Supreme Court on 14 December 2017, the Court restated that "to prove and establish an action of passing off, three ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation and damages". Goodwill has to be established as a fact. Misrepresentation has to be shown, not assumed.
| Feature | Infringement | Passing off |
|---|---|---|
| Source of the right | Statutory, Sections 28 and 29, Trade Marks Act 1999 | Common law, expressly preserved by Section 27(2) |
| Who can sue | Registered proprietor and, in defined circumstances, a registered user | Anyone with provable goodwill in the mark, get-up or name |
| Core proof | Registration, and use of an identical or deceptively similar mark on the registered goods or services | Goodwill, misrepresentation and damage or likelihood of damage |
| Reputation | Not an ingredient of the basic case | Essential, and it must be reputation in India |
| Scope beyond the registration | Limited to the registered specification, except for the wider protection in Section 29(4) | Not limited by any register; it follows the goodwill |
| Forum advantage | Section 134(2) lets the plaintiff sue where it resides or carries on business | No such benefit; ordinary rules of the Code of Civil Procedure apply |
| Key defences | Sections 30 to 35, including limits on effect, Section 34 prior use, and Section 35 bona fide use of one's own name or a description | No goodwill, honest concurrent use, delay and acquiescence, dissimilar trade channels |
| Reliefs | Section 135, injunction plus damages or account of profits at the plaintiff's option, and delivery up | Section 135 applies equally to passing off suits |
The forum point that catches plaintiffs out
Section 134(1) requires that suits for infringement, suits relating to any right in a registered trade mark, and suits for passing off, all be filed in a court not inferior to a District Court. Section 134(2) then adds the well known convenience: for the purposes of clauses (a) and (b) of sub-section (1), a District Court having jurisdiction includes one within whose limits the plaintiff actually and voluntarily resides, carries on business or personally works for gain.
Read that carefully. The benefit is expressed for clauses (a) and (b), which are infringement and rights in a registered trade mark. Clause (c), passing off, is not included. A plaintiff with no registration, suing purely in passing off, cannot rely on Section 134(2) and must find jurisdiction under the Code of Civil Procedure, which usually means where the defendant resides or works for gain or where the cause of action arose.
Section 134 splits the forum rules between the two claims, and the split is easy to miss.
Section 134(1)
Suits for infringement, suits relating to rights in a registered trade mark, and suits for passing off must all be filed in a court not inferior to a District Court.
Clauses (a) and (b)
For infringement and rights in a registered mark, Section 134(2) also allows the District Court where the plaintiff resides, carries on business or personally works for gain.
Clause (c), passing off
It is left out of Section 134(2). A plaintiff suing purely in passing off must establish jurisdiction under the ordinary rules of the Code of Civil Procedure.
Common mistake. Filing a composite suit in your home city on the strength of Section 134(2) when your registration does not actually cover the goods or services in dispute. If the infringement limb collapses, the jurisdictional foundation can collapse with it, and you can find yourself arguing a return of the plaint instead of an injunction.
Where passing off beats registration
Registration is powerful but it is not a shield against a prior user. The Supreme Court dealt with this squarely in S. Syed Mohideen v. P. Sulochana Bai, decided on 17 March 2015, holding that "the rights of prior user are recognized superior than that of the registration and even the registered proprietor cannot disturb or interfere with the rights of prior user", and that registration "merely recognizes the rights which are already pre-existing in common law and does not create any rights".
That reading is anchored in the text of the statute. Section 28(1) confers exclusive rights only "subject to the other provisions of this Act". Section 34, headed "Saving for vested rights", says nothing in the Act entitles the proprietor of a registered mark to interfere with the use by a person who has continuously used an identical or nearly resembling mark from a date earlier than the proprietor's first use or the date of registration, whichever is earlier. Section 28(3) makes the same point between two registered proprietors of similar marks: neither can sue the other for infringement merely on the strength of registration, which leaves passing off as the only live cause of action between them.
Key takeaway. If your opponent registered first but you used first, do not assume the register decides the fight. Continuous prior use, properly evidenced with dated invoices, advertisements and filings, is the strongest position in Indian trade mark litigation.
Reputation earned abroad does not travel automatically
Toyota v. Prius is the case every brand owner entering India should read before assuming their global name protects them here. The Court preferred the territoriality principle over universality, observing that "the overwhelming judicial and academic opinion all over the globe seems to be in favour of the territoriality principle", and that prior use of a mark in one jurisdiction "would not ipso facto entitle its owner to claim exclusive rights" in another. Toyota's passing off claim failed because it could not show that it had acquired substantial goodwill for the Prius name in the Indian market before the defendants adopted it.
Practically, this means evidence of Indian goodwill has to be assembled deliberately: Indian sales figures, Indian advertising spend, Indian press coverage, circulation of foreign publications in India, and evidence of Indian consumers actually associating the mark with the claimant. A global website accessible from India, without more, is thin material. Brand owners in this position should also look at the separate route of well known mark protection, which we cover in our note on well known trade mark protection in India.
Deceptive similarity, and why medicines are treated differently
Both actions turn on similarity, and the standard analysis comes from Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, decided on 26 March 2001. The Court listed the factors: the nature of the marks, the degree of phonetic and visual resemblance, the nature of the goods, the similarity in character and performance of the rival products, the class of purchasers and their education and intelligence and the care they are likely to take, the mode of purchasing the goods, and any other surrounding circumstances.
For medicinal products the Court applied a stricter approach, reasoning that confusion between two medicinal products "may have disastrous effects on health and in some cases life itself", and that public interest supports a lesser degree of proof of confusing similarity for pharmaceutical marks than for ordinary goods. Anyone advising on a pharmaceutical brand should assume the bar for similarity is lower than it would be in fast moving consumer goods.
This is what a court weighs when it tests two marks for deceptive similarity.
The marks and the goods
Nature of the marks, the degree of phonetic and visual resemblance, the nature of the goods, and the similarity in character and performance of the rival products.
The purchaser
The class of purchasers, their education and intelligence, the care they are likely to take, and the mode of purchasing the goods all form part of the test.
Medicinal products
A stricter approach applies. Confusion between two medicinal products may have disastrous effects on health, so a lesser degree of proof of confusing similarity is accepted.
How the two actions run in practice
- Audit the registration before you draft. Check the class, the exact specification of goods or services, the status of the mark, and whether it is still within validity. An infringement claim outside the registered specification is fragile.
- Build the goodwill file in parallel. Dated invoices, the first commercial use document, advertising spend, distribution reach, awards, press coverage and social media metrics. This is the file that carries the passing off limb if the infringement limb narrows.
- Pick the forum on the strongest limb. If you rely on Section 134(2), be able to demonstrate the registration and the plaintiff's place of business on affidavit at the first hearing.
- Consider whether the suit is a commercial dispute triable by a Commercial Court where the specified value threshold is met, since that route brings case management timelines and a different appellate path.
- Plead the two causes of action separately and completely. Do not roll goodwill, misrepresentation and damage into a single paragraph borrowed from the infringement plea.
- Move for interim relief immediately. Section 135(2) expressly contemplates ex parte injunctions and interlocutory orders for discovery, preservation of infringing goods and restraint on disposal of assets.
- Anticipate a rectification petition. If the defendant challenges the validity of your registration, Section 124 allows the suit to be stayed pending rectification, which is why the passing off limb is worth pleading properly even when your registration looks solid.
- Be careful with cease and desist letters. Section 142 provides a remedy against groundless threats of infringement proceedings, so a threat that is not followed by a suit within a reasonable time can create exposure.
Reliefs, costs and timelines
Section 135(1) gives the same menu in both actions: injunction, and at the option of the plaintiff either damages or an account of profits, with or without delivery up of infringing labels and marks. The figures below are indicative and vary with the court, the value of the claim and the intensity of the contest.
| Stage | Indicative time | What drives cost |
|---|---|---|
| Pre-suit investigation and cease and desist | 2 to 6 weeks | Market survey, sample purchase, notice drafting |
| Suit filed with application for ex parte injunction | 1 to 4 weeks from complete instructions | Court fee on the valuation, drafting, affidavits |
| Interim injunction decided after hearing both sides | Commonly 2 to 12 months | Number of hearings, documents, any local commissioner |
| Trial and final decree | Commonly 3 to 6 years, shorter in Commercial Courts with case management | Witnesses, discovery, expert or survey evidence |
| Rectification proceedings, if the registration is attacked | Runs in parallel, often 1 to 3 years | Separate pleadings and evidence |
A note from practice
The pattern I see most often in Bengaluru is a founder who registered a word mark in one class years ago, has since expanded into three adjacent lines of business, and now finds a competitor using a similar name in a line the registration never covered. The instinct is to lean on the certificate. The better instinct is to open the sales ledger. In that fact pattern the infringement claim is genuinely narrow, but the passing off claim can be very strong, because the business has years of documented use, customer recognition and revenue attached to the name across all the lines. The work that decides those cases is unglamorous: pulling dated invoices, matching them to advertising spend, and proving the mark meant something to Indian customers before the defendant showed up. Related reading includes our notes on trade mark infringement in India and IP protection for startups, and our intellectual property practice page.
Related guides and where to get help
- Trademark Infringement in India: Tests, Remedies and Damages
- Copyright Infringement Remedies in India
- How to Reply to a Trademark Objection in India
Frequently Asked Questions
Can I sue if my trade mark is not registered?
Not for infringement. Section 27(1) of the Trade Marks Act 1999 bars that. You can sue for passing off, because Section 27(2) preserves the common law action, but you will have to prove goodwill, misrepresentation and damage.
Is passing off weaker than infringement?
It is harder to prove but wider in reach. Infringement is confined to the registered specification, while passing off follows the goodwill wherever it genuinely extends, and it can be pleaded against a registered proprietor who came later.
Can both claims be brought in one suit?
Yes, and they usually are. Section 134(1) contemplates both, and Section 135 provides reliefs for both. They must be pleaded as separate causes of action with their own ingredients.
Does my registration protect me against someone who used the name before me?
Not automatically. Section 34 saves the vested rights of a continuous prior user, and the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai held that prior user rights are superior to registration.
Does a global brand automatically have rights in India?
No. Toyota v. Prius applies the territoriality principle, so a foreign proprietor must show goodwill and reputation in the Indian market itself to succeed in passing off.
Where can the suit be filed?
Not below a District Court. For infringement, Section 134(2) additionally allows the plaintiff's own place of residence or business. That benefit does not extend to a standalone passing off suit, which follows the ordinary jurisdiction rules.
What relief can a court grant?
Under Section 135, an injunction and, at the plaintiff's option, either damages or an account of profits, with or without delivery up for destruction or erasure. Ex parte and interlocutory orders including asset restraint are expressly contemplated.
Does delay matter?
Yes. Delay and acquiescence are live defences to interim relief in both actions, and Section 33 deals with the effect of acquiescence where a registered mark has been knowingly tolerated for a continuous period of five years.
Is there a criminal remedy as well?
Yes. Sections 103 and 104 of the Trade Marks Act 1999 create offences for applying false trade marks and for selling goods or providing services to which a false trade mark is applied. That route is separate from the civil suit and is usually a complement to it, not a substitute.
This article is general information on Indian law and is not legal advice. Trade mark disputes turn on the specific mark, class, evidence of use and facts of the case.
