Infringement and Passing Off Compared

In one line

Infringement is the invasion of a statutory monopoly in a registered mark, passing off is the tort of misrepresenting your goods as somebody else's, and the difference decides what the plaintiff must prove and what the defendant may say in answer.

Why this exists

Registration did not abolish the common law. Before any register existed, a trader who took another's name and get up was liable for deceit, and equity restrained him. When Parliament created a register it created a new and easier right, but it did not take the old one away.

Section 27 says both things in two sub sections.

Section 27(1): "No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an UNREGISTERED trade mark."

Section 27(2): "Nothing in this Act shall be deemed to affect rights of action against any person for PASSING OFF goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

Read them together and the architecture appears. Infringement is for the registered; passing off is for everybody, registered or not; and the Act does not touch the second.

The distinction, in the Supreme Court's own words

Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980.

Facts. The respondent was registered proprietor of NAVARATNA and NAVARATNA PHARMACEUTICAL LABORATORIES for medicinal products. The appellant, also a maker of medicinal preparations, applied to register NAVARATNA PHARMACY, was opposed successfully, and then applied to have the respondent's marks removed. Rectification, infringement and passing off all came up together.

Held. In a passing off action the plaintiff must prove that the defendant's get up, mark or trade name is calculated to deceive, so that added matter may save the defendant. In an infringement action, once the marks are shown to be identical or so closely similar that one is likely to be taken for the other, the plaintiff succeeds; the defendant's additional matter, or differences of get up, packaging or trade name, is no answer, because infringement is the invasion of a statutory right in the mark itself.

Why it matters. It is the sentence every answer on this topic is built around. Passing off asks about the whole of what the defendant did. Infringement asks about the mark.

Ruston & Hornsby Ltd. v Zamindara Engineering Co., AIR 1970 SC 1649.

Facts. Ruston, proprietor of the registered mark RUSTON for engines made in England, sued for the use of RUSTAM on engines made in India. The defendant said it used RUSTAM INDIA. The High Court found RUSTAM deceptively similar to RUSTON but held that adding INDIA warned buyers the engine was not the English one.