Difference between infringement and passing off
In case of infringement:
ADVERTISEMENTS:
Infringement is based on property acquired by registration of the trade mark, user of the mark not relevant. Defendant must use the offending mark on the same goods for which plaintiffs mark is registered. If the marks are identical or deceptively similar no further proof is required.
Use of the mark by the defendant need not cause any injury or damage to plaintiff. Use of the registered trade mark or a mark similar to it necessary and sufficient
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Infringement applies only to goods. It is based on violation of a statutory right. Use of the mark as a trade mark is sufficient. Use of additional matter indicating a different trade source is not material. Action for infringement is a statutory remedy. Infringement need not necessarily lead to passing off.
In case of passing off:
ADVERTISEMENTS:
Passing off is based on property in goodwill acquired by use of the mark. Registration is not relevant. Defendant’s goods need not be same; it may be allied or even different. Identity or similarity of the marks is not sufficient.
The use of the mark or symbol must be likely to deceive or cause confusion. Use of mark by the defendant must be likely to cause injury or damage to the plaintiff’s goodwill.
Use of plaintiffs trade mark is not essential in the case of passing off. Use of get-up, color scheme layout, shape of the goods, trade name, etc. are sufficient.
Passing off can be committed orally also. Passing-off applies to any business whether trading or non-trading, profit making or non-profit making or professions or services. Passing-off is based on violation of a common law right.
ADVERTISEMENTS:
Objection to use of plaintiff’s mark be off-set by added matter clearly distinguishing the defendant’s goods from the plaintiffs’. Action for passing-off is a common law remedy. Passing off by use of mark need not necessarily lead to infringement.
The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy.
Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required.
In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely Jo 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 to 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.
“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.