Passing off and infringement are the two grounds available for the trademark owner to seek redressal over infringement of his or her exclusive rights. While in cases of a registered trademark, the registered user can take action against infringement of the concerned trademark, in cases where the trademark is not registered, the common law remedy in form of passing off action is maintainable. In the case of Durga Dutt vs. Navaratna Pharmaceuticals, the Supreme Court clarified the distinction between infringement and passing off (1960). The Court decided that a statutory remedy accessible to the registered owner of a registered trademark who has the exclusive right to use the mark in relation to such products is an infringement action. Passing off is also possible with unregistered goods and services.
Infringement of registered trademark
A registered trademark is said to be infringed by any person who, not being the registered proprietor of the mark or being a person authorized by the owner for its use (registered user), uses in the course of trade, a mark that is identical with, or deceptively similar to the mark in relation to goods and services for which the trademark is registered. While anybody can initiate criminal procedures for using false trademarks or descriptions, only a registered proprietor of the trademark or a registered user of the brand can initiate proceedings for trademark infringement, according to Section 52 of the Trademark Act, 1999. Because the certificate of registration is not admissible in court, the plaintiff may only prove his or her registration and title by producing a certified copy of the entry in the register, as stated in Section 137. Section 31 expressly states that the initial registration, as well as all future assignments and transmissions of the trademark, will be prima facie proof of its validity in all legal proceedings relating to a trademark registered under this Act.
Passing off
Passing off occurs when an unregistered trademark is utilized in relation to the trademark owner's products and services by someone who is not the trademark owner. It is founded on the concept that no one should profit himself illegally at the expense of another. It is a common law actionable tort in India that is primarily utilized to safeguard the goodwill associated with products and services that are tied to unregistered trademarks.
Because infringement litigation only includes a registered trademark, it has a higher level of clarity than passing off suit, which is more ambiguous than registered marks. Furthermore, there is no legislative presumption in favor of unregistered marks based on their public impact. Infringement of a registered trademark, on the other hand, is aided by statutory presumption. The plaintiff merely needs to show that the mark is identical or deceptively similar to his in connection to his products and services in registered marks. However, in the case of unregistered marks, it is required to show that, in addition to the marks are identical or deceptively similar to each other, that there was public deception or confusion, and that the plaintiff's goodwill was harmed.
Furthermore, commencing criminal procedures in the case of passing off is more difficult than registering a trademark. Although damages are the foundation of a passing-off claim, the plaintiff must establish that the defendant engaged in the deliberate activity to confuse the public. Even if the defendant deceives the public, a private individual cannot bring a claim for passing off unless it can be proven that the defendant's actions are likely to cause harm to the individual. The passing off remedy does not provide the benefits of initiating a lawsuit under Section 134 of the Trademarks Act.
It is always advisable that the trademark owner must go for registration of their trademark instead of relying on the passing off action, as prevention is better than cure.