The difference between Infringement and Passing Off of a trademark are given below:

Infringement Passing off
Statutory remedy Common Law remedy
Registration of trademark is required Registration of trademark is not a pre-requisite
Plaintiff is only required to establish that infringing mark is deceptively similar to the registered mark in respect of similar goods / services and no further proof is required afterwards as there is presumption of confusion Plaintiff is not only required to establish deceptive similarity of two contesting mark but also require to prove deception or confusion among public and likelihood of injury to the plaintiff’s goodwill
Prosecution under Criminal remedies is easier Prosecution under Criminal remedies is relatively harder
Benefit of instituting the suit under Section 134 of the Trade Marks Act, 1999 is available wherein the registered proprietor or registered user of the trademark can institute the suit where they actually and voluntarily resides or carries on business or personally work for gain Such benefit is not available and the regular rules of jurisdiction provided under Section 20 of Civil Procedure Code, 1908 apply i.e. Passing off action has to be filed where the Defendant resides or carried on business or cause of actions has arisen.

An action for Infringement for registered trademark or tort of Passing off for both registered as well as unregistered trademark are essentially two ways of achieving the same objective i.e. protection of goodwill attached with a mark. In India a combined action for infringement and passing off is permissible. However, both are technically two different concepts and the difference between the two is highlighted above.

Category: trademark-litigation-faq
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