Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: – ‘an action for infringement’ in case of a registered trademark and ‘an action for passing off’ in the case of an unregistered trademark.
The basic difference between an infringement action and an action; of passing off is that the former is a statutory remedy and the latter is a law remedy.
Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that ‘ infringing mark is identical or deceptively similar to the registered no further proof is required.
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In the case of a passing off action that the marks are identical or deceptively similar alone is not efficient. The use of the mark should be likely to deceive or cause confusion.
Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.
However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption prevails over priority in registration” in many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.
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Passing off originated with the tort of deceit the doctrine is based on the principle that one trader is not to sell his goods under the pretence that they are the goods of another trader.
Historically, marketplace has been concerned with guaranteeing consumers the quality of goods that they had come to rely upon in the course of trade.
To further that guarantee, the common law developed the tort of passing off, which helped to assure that a person was representing his goods as being his and not the goods of someone else.