When you sue for both infringement and passing off, do not ask for two separate injunctions. The Bombay High Court has called that “a singularly unwise practice” — and the logic is hard to argue with.
Two causes of action, one goal
The Trade Marks Act, 1999 protects both registered and unregistered marks:
- Section 29 grounds an infringement claim (likelihood of confusion, identical/similar marks).
- Section 27(2) preserves the passing off remedy, which requires the classic trinity — goodwill, misrepresentation and damage.
Reliefs in either case include interim and permanent injunctions, damages, and destruction of infringing material. A plaintiff with a registered mark commonly pleads both causes for maximum protection.
The pleading trap
The problem is in the prayers. In Hindustan Unilever, the Bombay High Court criticised setting out “two separate prayers, one for infringement and one for passing off” as singularly unwise. The reasoning:
- A defendant cannot logically be restrained from infringement while left free to pass off — the two cannot be separated in the order.
- Just as damages and receiver appointments are pleaded once, the injunction should be sought once.
- Referring to S. Syed Mohideen v. P. Sulochana Bai, the court noted trademark law creates no new right but recognises superior common-law rights (Section 28(3)); since the object is injunctive relief, the prayer should be a single injunction supported by either cause of action.
How to plead it
- Frame one injunction prayer, supported by both infringement and passing off as alternative causes of action.
- Plead the elements of each cause fully in the body — registration and Section 29 for infringement; the goodwill–misrepresentation–damage trinity for passing off.
- Keep consequential reliefs (damages, delivery-up, accounts) consolidated.
Think prayer. Think logic.
Frequently asked questions
Can I sue for both infringement and passing off? Yes — a plaintiff with a registered mark commonly pleads both, under Sections 29 and 27(2) respectively.
Should I ask for separate injunctions for each? No. The Bombay High Court called separate injunction prayers “singularly unwise”; frame a single injunction supported by either cause of action.
What must a passing-off claim prove? The classic trinity — goodwill, misrepresentation and damage.
Why can’t the reliefs be separated? A defendant cannot be enjoined from infringing while left free to pass off; the injunction addresses the same wrong and should be pleaded once.
Legislation referred to
- The Trade Marks Act, 1999