Infringement
Infringement is a statutory remedy for registered trademarks. You must show that the defendant uses an identical or deceptively similar mark in the course of trade, for goods or services covered by the registration (or for other goods where your mark has a reputation). Registration itself establishes your right to the mark.
Passing off
Passing off protects goodwill, whether or not the mark is registered. You must prove:
- Goodwill or reputation attached to your goods or services,
- A misrepresentation by the defendant likely to deceive the public, and
- Damage or likely damage to your goodwill.
Passing off can also protect the overall get-up — label layout, colour scheme, packaging shape — even where the brand names differ.
Which should you claim?
Most suits claim both. Infringement is easier to prove; passing off covers the trade dress and get-up that a word registration does not.
Remedies
Injunction, damages or account of profits, delivery up of infringing goods, and costs. Courts can appoint a Local Commissioner to seize infringing stock at the outset in suitable cases.
Where to file
Trademark suits are commercial disputes, filed before the Commercial Court. For registered marks, a suit can be filed where the plaintiff carries on business.
This guide explains the general position in India. Fees and rules change; your facts may change the answer. Speak to us before acting on it.