Trademark Protection & Enforcement:
Trademark protection besides granting exclusive rights to the applicant for using the trademark, also prevents any unlawful and unauthorized use of the mark by any third person. Accordingly, the applicant of a trademark can enforce his/her trademark rights against infringers via an infringement suit and/or a suit for passing off.
Infringement or Passing Off?
It is pertinent to note that these 2 remedies available for unlawful and unauthorized use of a trademark are different from one another. One major difference between infringement and passing off suits is the fact that an action for infringement can be brought only if the Applicant has a registered trademark in India, whereas, the passing off suit, a tort founded on common law principles, can be invoked for even an unregistered trademark.
Also, infringement action is a statutory remedy enshrined in the Trade Marks Act, 1999, contrary to the passing off action, which is not defined in the Act, rather is a common law principle.
An action of infringement has its own leverage over a passing off action. Though the latter right has been conferred upon the unregistered user, the burden of proof is more severe than that in any action for infringement. A person claiming an action for passing off has to pass the classical trinity test which makes the claim difficult while any claim for infringement succeeds if the plaintiff is able to prove that the impugned trademark is a colourable imitation of the plaintiff’s trademark. Deception is an important element for a claim against passing off but it hardly holds any significance in an action for infringement. Both the actions are different from each other in many aspects, but none can be said to be superior to the other.
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