Difference Between Trademark Infringement and Passing Off

Difference Between Trademark Infringement and Passing Off

Difference Between Trademark Infringement and Passing Off

“Trademark infringement – An Exclusive Remedy for Registered Trademarks”

There are thousands of business units being set up in India every year with the innovative products and services being offered. Due to the huge number of similar kinds of products and services there is a tough competition always going on in the market to become the customer’s choice and get established. One thing that plays a major role in differentiating the products and services of one person from another is the brand name or logo associated with it.  The brand name, slogan, tagline, mark etc that is capable of distinguishing the products and services of one person from others is known as the Trademark. The registered Trademark is an asset for the firm that helps the owner in securing his exclusive rights. In case any person makes use of the registered mark without the permission of the registered owner, the said person can be sued for Trademark infringement. The Registered owner is protected against the unauthorized use and can take the various remedial actions for it. Does that mean only the registered owner can take action against unauthorized use of his mark? No, the right to take action against the unauthorized use is available under the common law also. The law provides the Passing off action remedy to any person using the mark and having the considerable amount of brand image in the market. Both Trademark infringement and passing off are remedial actions for making the unauthorized use of the Trademark. However, they differ from each other in multiple aspects. Today with blog we will be taking a look at the difference between the Trademark Infringement and passing off action.

Trademark Infringement – The situation wherein an unauthorized use is carried by the person of the registered Trademark under the Trademark regulations is known as Trademark infringement.  The  Registered user of the mark is empowered to take a legal action against the infringer of the mark according to the Trademark Infringement rules.

Passing Off Action – Any person who has not obtained the registration of his Trademark can only take a action against the unauthorized use of the mark under the passing off action. The passing off is the remedy given to the unregistered user of the mark under the common law. However, this can only be exercised when the owner of the mark proves that he is a bona fide prior user of the mark and he possess the goodwill in the market.

What is the difference between the Infringement and Passing off Action?

  1. The Trademark infringement remedy is a statuary remedy provided by the law to the registered users whereas Passing off action is the common law remedy.
  2. In order to avail the benefit of claiming remedies under the Trademark Infringement it is mandatory that the Trademark must be registered. Whereas, in case of passing off action registration of Trademark is not mandatory.
  3. In order to take an action under the passing of action the onus of reflecting the goodwill, similarity and the loss incurred due to the similar name usage is on the person seeking the remedy. Whereas, under the Trademark Infringement remedy only proving the prior usage is necessary.
  4. Claiming the trademark infringement remedy is relatively easier than claiming the remedy under the passing off action.
  5. With Trademark Infringement the exclusive rights of the owner over the brand are protected whereas under the passing off action limited rights of owner are protected.

In this manner the Trademark infringement is different from Trademark passing off action.  Here is one more reason why you should opt for TRADEMARK REGISTRATION as it provides you the Benefit of making a claim easily under the Trademark Infringement.