Differences Between Infringement And Passing Off Of A Trademark
Uniqueness is what defines a trademark. A trademark needs to be a one-of-its-kind graphical representation depicted on a product. It can be in the form of a picture, word, shape, packaging, labeling, colour/ colour combinations or any form of a visual symbol. Owning a trademark allows a proprietor or a trader to utilise it for commercial gains. A good trademark enables the customers to easily identify products manufactured by a particular company. This is why it is important to prevent others from misusing the trademarks by ensuring exclusive use by the owner. There are chiefly two ways in which legal action can be taken in case of violation, namely, infringement and passing off. Both are applied in different scenarios and for different remedies.
An action for infringement is available for trademarks registered under the Trade Marks Act, 1999. The main elements required are the use of identical or deceptively similar trademarks by others. There are additional conditions based on the class of goods/services. An action for passing off is targeted at traders who try to pass off their goods by adopting similar designs or trademarks of others. This protection is available for proprietors who may not have registered, but have been using the trademark for some time and built goodwill around it.
Differences Between Infringement And Passing Off
Registration
An action for infringement can be initiated only if the trademark is registered under the Trade Mark Act, 1999. Registration is the relevant criteria for such an action, while usage details are irrelevant.
In an action for passing off, only the bonafide usage of the trademark counts. It has little to do with the registration part. The most important thing being the goodwill garnered by a trademark through continuous usage.
Intent
Any goods with a trademark which are identical or deceptively similar to a registered trademark is regarded as a proof of infringement. The ultimate purpose- whether it was used innocently or with malicious intentions do not matter.
Passing off is done with the intention of deceiving the customers and creating confusion into purchasing goods disguised as a known trademark.
Class Of Goods
For taking action under infringement, the violating trademark should be affixed on the same class of goods for which the trademark is registered. This is in accordance with the requirements for registration under the Trade Marks Act.
An Action for passing off does not require the goods to be of the same class. They may be allied or belong to different classes altogether. For Example, A person will not be allowed to start a pencil manufacturing company under the trademark of a reputed pen maker. This may confuse the customers.
Violation
An infringement action requires the actual use of an identical or a deceptively similar mark on a product manufactured by others. It is not required for a passing off action where things like use of colour schemes, shape of goods, labelling and packaging styles are regarded as violations. In short, it involves any efforts to deceive customers.
Injury/Damage
It is not necessary that the unauthorised use of an identical or deceptively similar mark should cause damage/future damage to the owner of the trademark for an action under infringement. The mere fact of a mark being deceptively similar is sufficient.
The main requirement for a passing off action is damage or the likelihood of damage to goodwill of a trader.
Applications
An action for infringement can be only on goods and services for commercial sale. A passing off action can apply to any organisation- whether trading or non trading, commercial or non profit organisations; professions or other services. The prime factor here is reputation and goodwill. Even a not for profit organisation’s goodwill needs to be protected against unauthorised use that may affect its reputation.
Rights Involved
An action for infringement arises from the violation of a statutory right. Registration of a trademark provides legal protection under Section 29 and 30 of the Trade Marks Act, 1999.
An action for passing off provides protection to a common law right derived from the principle that “a man may not sell his own goods under the pretense that they are the goods of another man.” However, it has not been defined by any law in India. It has only been referred to in Section 27 (2), 134 (1)(c) and 135 of Trademark Act, 1999.
Usage
If a trademark is used illegally, it is a valid ground for an infringement action. It does not matter if the mark was used with other marks that indicate a separate source of manufacture or origin.
In a passing off action, the presence of additional detailing that clearly distinguishes the defendant’s goods may prove against such action.
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