Passing Off vs. Infringement: Which Legal Remedy Should You Choose?
Imagine this: You have been running a successful family business under the brand name "Kerala Spices" for 20 years. Suddenly, a new competitor opens a shop next door named "New Kerala Spices." You rush to your lawyer, only to realize you never formally registered your trademark.
Is all hope lost? No. But your legal battle just got significantly harder. This scenario highlights the crucial distinction between Trademark Infringement (for registered marks) and Passing Off (for unregistered marks). This guide breaks down why businesses should always aim for registration to avoid the "Passing Off" trap.
1. The Core Difference: Statutory Right vs. Common Law
The Trade Marks Act, 1999, provides two distinct paths for relief:
Infringement (Section 29)
This is a Statutory Remedy available only to registered trademark owners. It acts like a property title deed. You don't need to prove you are famous; you only need to prove you own the registration and the other party is using a similar mark.
Passing Off (Section 27)
This is a Common Law Remedy. It is based on the principle that "nobody has the right to represent their goods as the goods of somebody else." Since you don't have a registration certificate, you must prove your reputation from scratch.
2. The "Classical Trinity" Test
To win a Passing Off suit, you cannot simply show a registration certificate. Instead, you must satisfy the "Classical Trinity" test established in the landmark Reckitt & Colman Products Ltd v Borden Inc (Jif Lemon case), which Indian courts strictly follow:
- Goodwill: You must prove you have established a reputation in the market. (Requires submitting sales figures, invoices, and ad spends for years).
- Misrepresentation: You must prove the defendant is deceiving the public into believing their goods are yours.
- Damage: You must prove you have suffered (or will suffer) actual financial loss or damage to your goodwill.
The Burden of Proof: In infringement, the burden is low. In passing off, the evidentiary burden is massive and expensive.
3. Why "Passing Off" is a Riskier Battle
For SMEs and legacy businesses relying on unregistered marks, passing off suits are unpredictable. A court may rule that while your name is similar, your "Goodwill" is limited only to one specific town, thereby allowing the competitor to operate in a neighboring district.
In contrast, a Registered Trademark under Section 28 grants you the exclusive right to use the mark across the entire country, regardless of whether you have opened a shop in that specific state yet.
4. Strategic Advice for Unregistered Brands
If you find yourself with an unregistered mark facing a copycat:
- Collate Evidence Immediately: Gather every invoice, newspaper ad, and social media post from Day 1 of your business.
- Prior Use is Key: Under Section 34, a "Prior User" (even unregistered) can defeat a subsequent Registered User. Your history is your only weapon.
- File for Registration Now: It is never too late. Filing an application gives you a timestamp that strengthens your position in future disputes.
Conclusion
While "Passing Off" exists as a safety net for the unregistered, it is a safety net full of holes. It requires expensive litigation and exhaustive evidence. The smartest business decision is to convert your Common Law rights into Statutory Rights by obtaining a Trademark Registration, turning a complex battle of reputation into a simple enforcement of property rights.
Office of M S Sulthan Legal Associates
For inquiries regarding Trademark litigation, passing off suits, or brand registration strategies, please refer to the contact details below.
