Separating Trademark Infringement and Passing off

14th November, 2024 - 9:20 am Categories: Trademark 0 Comments

Introduction

Brands in today’s environment are no longer just slogans, they are encompassing identity that represents quality, reputation, and trustworthiness. Any brand company must be very keen in protecting these brands. Two key areas of the Intellectual Property law, that of trademark infringement and passing off, are involved in this protection. Although these two terms are usually used to denote the same thing, but they represent two different legal concepts that have entirely different prospects to companies. On this blog, we will get to learn the distinct differences between trademark infringement and passing off to know where the two concepts begin and end.

Understanding Trademarks

A trademark a sign which includes words, phrase, symbol, color or sound notes or even a combination of these to help distinguish the origin of products or services from the rest in the market. Being a marketing device, trademarks also assist consumers in distinguishing the quality and source of products bearing them, while also being indispensable to building brand associations.

One of the things people fail to grasp is that when you have a trademark, it doesn’t mean you own the word or phrase and people cannot use it. However, you do not get the exclusive rights for a word or phrase in general, but the way that word or phrase has been used in connection with the goods or services offered.

Trademark protection is vital for several reasons:

1. Consumer Confidence: Consumers can easily distinguish between originals and imitation goods thus trademarks give confidence to customers that the products are from genuine dealers.
2. Brand Identity: A good trademark is instrumental in establishing business brand images and corporate reputation in the society.
3. Legal Rights: Trademark registration includes trial rights that assists in the fight against the use of a similar mark, in order to cause confusion among customers.

Trademark Infringement

Trademark infringement is the unauthorized usage of a trademark that is either similar to the Trademark registered with the Trademark Office. The main concern from here is the risk of consumers being confused by the identity of the source of specific goods or services.

Elements for Trademark Infringement-

1. Ownership of a Valid Trademark: The plaintiff has to show that s/he has a valid trademark that has been rebutted with the relevant registry.
2. Use in Commerce: The defendant has to be using a mark in commerce and should be very close in resemblance to that of the plaintiff’s mark that customers are confused.
3. Likelihood of Confusion: There several elements that are considered to analyse whether the consumers be confused about the source of either goods or services. This may involve assessing:

 The similarity of the marks

 The closeness of the business or enterprises

 The weakness of the defendant’s mark

 -The channels of trade

Legal Protection and Remedies-

Trademark infringement is mainly regulated under the provisions of the state law. If a court finds that infringement has occurred, the plaintiff may be entitled to various remedies, including:

1. Injunctions: Trademark law courts may force the infringing party to refrain from making use of the trademark.
2. Monetary Damages: The plaintiff may obtain for losses that they endure because of the infringement process.
3. Profits: The plaintiff may be entitled for an award of the profits that the infringer made out of the infringement.

Passing Off

Passing off is a common law tort that protects the goodwill of a business. The tort of passing off is regarded as being complex since the claimant-cum-plaintiff must ideally prove that a section of the public is likely to be confused between the two business entities.  It occurs when one party misrepresents their goods or services as those of another, leading to consumer confusion. Unlike trademark infringement, passing off does not require the plaintiff to own a registered trademark. However, in India today, the passing off action is not a statutory remedy for the simple reason that the trademarks act of 1999 only covers the procedure of its enforcement but it fails to explain passing off.

Elements for Passing Off-

To succeed in a passing off claim, the plaintiff must demonstrate:

1. Goodwill: The plaintiff must prove that they have established goodwill associated with their brand or product. This goodwill is typically built over time and is recognized by the public. It serves an appealing asset for the business to position it in a way that sets it apart from competitors by quality, stability, expectations, and growth. The second type is that attribute or force that assists the business, increase its size and which would be helped by an injury; in other words, something to which action will be taken whenever an infringement occurs. However, the goodwill or reputation has to be generated not only among friends and relatives but as something that would be acknowledged and accepted among more numerous potential consumers, though not the entire population of a given country.
2. Misrepresentation: The defendant had to give a misleading impression that could cause the consumers to confuse the origin of the product or the services being offered by his company. This can either be direct, where a company uses a very similar name to that of the brand, or indirect, where the company uses the same type of brand.
3. Damage: The plaintiff must show that they have suffered damage as a result of the defendant’s misrepresentation. This could include loss of sales, damage to reputation, or dilution of brand identity. The passing off action also applies to a situation where plaintiff likely suffers damage because of false representation over the source of the goods or services and the damage is otherwise assumed even in the event of a likelihood of deception.

Legal Protections and Remedies

The remedies of passing off also differ because it is a tort in common law. Common remedies include:

1. Injunctions: For this reason, courts may stop the defendant from further engaging in the deceptive practice.
2. Damages: Passing off entitles the plaintiffs to claim the losses they have borne because of such passing off and to remove the infringing mark.
3. Account of Profits: There perhaps may also be asked for an assessment of profits that the defendant obtained during the time of the conduct.

Key Differences Between Trademark Infringement and Passing Off

Trademark infringement and passing off are different but both are used to reduce confusion and protect brands.

1. Nature of Protection-

Trademark Infringement: This is a statutory protection that only applies to trademark registration as under section 29(1), Trademark Act, 1999. It relies on the rights conferred by registration and mainly centers on confusing similarity in respect of the origin of goods or services.

Passing Off: It is a situation that shields trademarks and goodwill where the trademark owner has not registered the trademark. It focuses on the false representation of good or services and was designed to protect the business image.

2. Burden of Proof-

Trademark Infringement: Pleadings normally show that the plaintiff has exclusive title to a valid trademark and that he/she has a likelihood of consumer confusion.

Passing Off: Even in cases where actual deception is not alleged, goodwill, misrepresentation and consequential losses, more often than not, embarks on a more descriptive real examination of a supra market perception to satisfy the elements required by a plaintiff.

3. Registration Requirement-

-Trademark Infringement: Registered trademark is required to launch a claim for infringement.

-Passing Off: It does not require registration and makes it favorable to businesses with goodwill regardless of whether they have registered their marks or not.

4. Remedies-

Trademark Infringement: The remedies are mostly provided under statute and may comprise significant damages and statutory damages in some states.

Passing Off: Relief are more optional and in the form of compensatory damages sustained by the plaintiff with regard to its goodwill as provided under section 20 of CPC, 1908.

Conclusion

Trademark infringement and passing off are two legal thorny issues in the legal system and every business entity that wants to protect its brand must know the difference between the two. Trademark infringement is based on the protection of statutory rights of registered trademarks and passing off deals with the likelihood of confusion to protect the goodwill of a mark which is not registered. The information presented proves that trademark registration, market monitoring, and awareness of legal mechanisms enable business entities to protect brand images and retain market dominance. With this concern comes the paramountcy of sound trademark protection especially as the market place progresses further into digital commerce coupled with global competitivity. Understanding of the differences between these two legal notions helps businesses to make proper actions and nonactions in order to protect their trademarks both legally and as a part of their reputation and credibility to consumers.

Author: Bhumi Raj, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

• References-

1. https://www.uspto.gov/trademarks/basics/what-trademark
2. https://www.khuranaandkhurana.com/2024/06/11/drawing-a-thin-line-between-passing-off-and-infringement-an-important-aspect-in-the-indian-trademark-law/
3. https://blog.ipleaders.in/trademark-passing-off/#:~:text=In%20simple%20words%2C%20when%20the,the%20difference%20between%20the%20two.
4. https://www.nibusinessinfo.co.uk/content/passing-definition-remedies-and-defences#:~:text=Remedies%20for%20passing%20off&text=You%20can%3A,seek%20account%20for%20lost%20profit
5. https://www.indialawoffices.com/knowledge-centre/infringement-and-passing-off#:~:text=Reliefs%2FRemedies%3A,marks%20for%20destruction%20or%20erasure
6. https://iiprd.wordpress.com/2020/03/06/difference-between-passing-off-and-infringement-of-the-trade mark/?utm_source=mondaq&utm_medium=syndication&utm_content=articleoriginal&utm_campaign=article