By S&S Co. Advocates & Solicitors · Published 26 September 2026 · Informational content, not legal advice: see our disclaimer
Two Different Legal Foundations for the Same Practical Problem
When a business finds a competitor using a similar mark, two distinct legal routes may be available: an infringement action under the Trade Marks Act, 1999, and a passing-off action under common law. They address the same commercial harm, confusion in the market, but rest on different legal foundations, require different proof, and are available to different classes of mark owners.
Trademark Infringement: A Statutory Remedy for Registered Owners
Infringement under Section 29 of the Trade Marks Act is available only to the owner of a registered trademark. Once registration is proved, the owner benefits from a statutory presumption of validity and generally need only show that the defendant is using an identical or deceptively similar mark on the same or similar goods or services, without needing to separately prove actual reputation or goodwill in every case.
Passing Off: A Common-Law Remedy Even Without Registration
Passing off is available to any trader, registered or not, whose goodwill is being misappropriated by a competitor's misrepresentation. It requires proof of the 'classic trinity': goodwill or reputation attached to the claimant's goods or services, a misrepresentation by the defendant leading or likely to lead the public to believe the goods are those of the claimant, and damage or likely damage to that goodwill as a result.
Why the Distinction Matters in Practice
An unregistered mark owner is not without a remedy: passing off protects genuine goodwill even absent registration, though it demands more evidence of actual market reputation. A registered owner, by contrast, can rely on the statutory presumption in an infringement action but may still plead passing off in the alternative, since registration does not extinguish common-law rights. Courts in India frequently hear infringement and passing-off claims together in a single suit, applying the relevant test to each cause of action separately.
Frequently Asked Questions
Can I sue for passing off if my trademark isn't registered?
Yes. Passing off is a common-law remedy that does not require registration: you need to prove goodwill in your mark, a misrepresentation by the defendant likely to confuse the public, and resulting or likely damage.
Is it easier to win an infringement suit than a passing-off suit?
Generally yes, because a registered proprietor benefits from a statutory presumption of validity in an infringement action, whereas passing off requires the claimant to independently prove actual goodwill and reputation in the mark.
Can I bring both an infringement and a passing-off claim in the same suit?
Yes. Indian courts routinely permit a registered trademark owner to plead infringement and passing off together in a single suit, since the two causes of action are not mutually exclusive.
Does registration replace the need to prove reputation?
For an infringement claim, no separate proof of reputation is generally required once registration and deceptive similarity are shown. For a passing-off claim pleaded alongside it, reputation and goodwill still need to be independently established.
References & Further Reading
This article references the following statutory provisions. Readers should always verify current rules, fees and timelines against the applicable statute and rules as amended, since these are revised from time to time.
- Trade Marks Act, 1999, Section 29 (Infringement).
- Common law tort of passing off, as recognised and applied under Indian trademark jurisprudence.