The Indian Trade Marks Act, 1999 provides remedies for both Passing Off and Infringement of Trade Marks, depending on whether the trademark is registered or unregistered.
🔍 Passing Off – Section 27(2) & Common Law Remedy
A passing off action is a common law remedy available to unregistered as well as registered trademark proprietors, and is codified under Section 27(2) of the Trade Marks Act, 1999.
To establish passing off, the Plaintiff must prove the following three essential elements (often referred to as the classical trinity):
1️⃣ Goodwill or Reputation
There exists goodwill or reputation in the relevant market in connection with the goods/services of the Plaintiff.
2️⃣ Misrepresentation
The Defendant makes a misrepresentation—intentionally or otherwise—leading the public to believe that the goods/services originate from the Plaintiff.
3️⃣ Damage
There is an actual or likely damage to the goodwill or business of the Plaintiff due to such misrepresentation.
🛡️ Trademark Infringement – Section 29 of the Trade Marks Act
Infringement is a statutory remedy available only to the registered proprietors of a trademark.
As per Section 29, an infringement occurs when:
✅ A deceptively similar or identical trademark is used by someone else,
✅ In relation to identical or similar goods/services,
✅ Without authorization from the registered trademark proprietor.
🆚 Key Differences & Remedies
| Aspect | Passing Off ⚖️ | Infringement 🛡️ |
|---|---|---|
| Trademark Status | Can be unregistered | Only for registered trademarks |
| Based on | Common law rights | Statutory rights under Section 29 |
| Need to prove goodwill | ✅ Yes | ❌ Not mandatory |
| Unauthorized use | ✅ Yes | ✅ Yes |
| Likelihood of confusion | ✅ Yes | ✅ Yes |
| Damage to reputation | ✅ Must be proved | ❌ Not necessary if infringement is evident |
🏛️ Supreme Court Ruling – Mohideen v. Sulochana Bai (2016)
In this landmark case (2016 (66) PTC 1 (SC)), the Hon’ble Supreme Court laid down four essential principles:
1️⃣ Passing off rights exist independently
They do not require statutory validation and predate the Trade Marks Act.
2️⃣ Trademark registration does not override prior common law rights
In a conflict between two registered marks, courts will assess which proprietor has preferable prior rights based on common law usage.
3️⃣ Prior Use Supersedes Registration
Under Section 34, the right of a prior user is superior—even against a registered proprietor.
4️⃣ Passing Off Offers Stronger Protection
The doctrine of passing off offers more effective and flexible protection than infringement remedies, especially for prior users.
📝 Legal Position Summarized:
✅ Registered Proprietor → Can claim both:
- Infringement (Section 29)
- Passing Off (Section 27 + Common Law)
✅ Unregistered Proprietor → Can claim:
- Only Passing Off remedy.
✅ Prior User Rights → Are enforceable even against registered users under Section 34.
📌 Final Takeaway
The passing off action remains a powerful legal tool to protect prior use and goodwill, even in the face of a registered trademark. Courts often give precedence to the senior user, emphasizing the importance of actual usage and market presence over mere registration.
If you’re planning to initiate legal proceedings based on trademark use, consult a trademark attorney to frame appropriate legal issues under Sections 27, 29, and 34 of the Act for a solid case strategy.