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Economic, Commercial and Intellectual Property Laws · Law relating to Trade Marks

Trade Mark Infringement, Passing Off and Remedies

Updated 11 October 2026 · Fact-checked

Infringement is the unauthorised use, in the course of trade, of a mark identical or deceptively similar to a registered trade mark, as set out in section 29 of the Trade Marks Act, 1999. Passing off protects even unregistered marks. Courts can grant injunction, damages or account of profits, and delivery-up. Answer by stating the provision, applying facts, then concluding.

Understand Infringement, Passing Off and Remedies

A trade mark tells buyers who stands behind the goods or services. If someone else uses a mark that looks or sounds like yours, buyers may be misled and you lose goodwill. The law gives you two routes: an action for infringement and an action for passing off.

Infringement is a statutory right. It is available only for a registered trade mark. Section 27(1) says no one can sue for infringement of an unregistered trade mark. The person who infringes is someone who is not the registered proprietor or a permitted user, and who uses the mark in the course of trade.

Passing off is a common law remedy. Section 27(2) saves it. You can sue even if your mark is unregistered, as long as you have goodwill and the defendant is passing off his goods or services as yours. Section 134(1)(c) covers passing off suits for registered or unregistered marks.

Section 29 lists several situations of infringement. Sub-sections (1) and (2) deal with identical or similar marks on identical or similar goods or services. Sub-section (4) protects well-known marks even against use on dissimilar goods. Sub-sections (5) to (9) cover use as a trade name, ways of using a mark, labelling material, advertising and spoken use.

The law also protects honest users. Section 30 lists acts that are not infringement. Section 135 sets out the reliefs a court can give, and section 134 says which court hears the suit.

Key rules to remember

Basic infringement (s. 29(1))
Not owner or permitted user + use in course of trade + identical or deceptively similar mark + goods or services for which mark is registered + use as a trade mark
All elements must be present. The mark must be used in a way likely to be taken as a trade mark.
Likelihood of confusion (s. 29(2))
Identical mark + similar goods, OR similar mark + identical or similar goods, OR identical mark + identical goods → likely confusion or association
In the identical mark and identical goods case, s. 29(3) makes the court presume confusion.
Dissimilar goods (s. 29(4))
Identical or similar mark + dissimilar goods + mark has reputation in India + use without due cause takes unfair advantage of, or harms, distinctive character or repute
Reputation in India is the key extra condition.
Trade name use (s. 29(5))
Using the registered mark as trade name or business name for goods or services in respect of which it is registered = infringement
Applies even where the mark is only part of the name.
Exceptions (s. 30)
Honest practices use to identify proprietor's goods; descriptive use; limitations on registration; consent use; accessory goods; use of one of two registered similar marks; exhaustion
Section 30(3) exhaustion does not apply if the proprietor has legitimate reasons, such as goods changed or impaired (s. 30(4)).
Reliefs (s. 135(1))
Injunction + (damages OR account of profits, at plaintiff's option) + delivery-up of infringing labels and marks for destruction or erasure
Ex parte injunction, discovery, preservation of evidence and asset-freezing orders are available under s. 135(2).
Court (s. 134)
Not lower than a District Court having jurisdiction
Plaintiff may sue where he resides, carries on business or personally works for gain (s. 134(2)).

How to solve Infringement, Passing Off and Remedies questions

Use this method for any problem on infringement, passing off or remedies. It follows the ICSI style: provision, analysis, conclusion.

  1. 1Check whether the plaintiff's mark is registered. If not, infringement fails under section 27(1). Move to passing off.
  2. 2Identify the defendant's act. Is it use in the course of trade, such as affixing, selling, importing, advertising or using as trade name (s. 29(6))?
  3. 3Compare marks and goods or services. Decide which limb of section 29 applies: (1), (2), (4) or (5).
  4. 4Check the extra conditions. For s. 29(4), is there reputation in India and unfair advantage or detriment? For s. 29(2)(c), presume confusion under s. 29(3).
  5. 5Test the exceptions in section 30, such as descriptive use, consent or exhaustion of rights.
  6. 6If the mark is unregistered, apply passing off: goodwill, misrepresentation and likely damage.
  7. 7State the remedies under section 135 and the court under section 134, including any bar on damages in section 135(3).
  8. 8Close with a clear conclusion: infringement or not, and the relief available.

Quickest way: Registered? Same or similar? Exception? Remedy?

When to use it: Use for short-note and case-study questions when time is tight.

  1. Write one line: registered mark means s. 29 infringement; unregistered means passing off under s. 27(2).
  2. Name the limb of s. 29 that fits the facts in one line.
  3. Rule out s. 30 exceptions in one line.
  4. List remedies from s. 135(1) in one line, plus court under s. 134.
  5. End with a one-line conclusion.

Common mistakes in Infringement, Passing Off and Remedies

  • Suing for infringement of an unregistered mark.

    Students treat all trade marks as equally protected.

    Fix: Remember section 27(1) bars infringement actions on unregistered marks. Only passing off is available, as saved by section 27(2).

  • Ignoring the presumption of confusion.

    Students analyse similarity even where the mark and goods are both identical.

    Fix: Under section 29(3), where mark and goods or services are identical (s. 29(2)(c)), the court presumes likely confusion.

  • Applying section 29(4) without reputation.

    Students focus on dissimilar goods and forget the reputation condition.

    Fix: Check that the registered mark has a reputation in India and that the use without due cause takes unfair advantage or harms its distinctive character or repute.

  • Saying genuine resale of goods is infringement.

    Students forget the exhaustion rule.

    Fix: Under section 30(3), selling lawfully acquired goods put on the market by the proprietor or with consent is not infringement. Section 30(4) removes this only if there are legitimate reasons, such as changed or impaired goods.

  • Awarding both damages and account of profits.

    Students read the remedies as a list to be granted together.

    Fix: Section 135(1) gives the plaintiff the option of either damages or an account of profits.

  • Missing the bar on damages for innocent infringers.

    Students stop at the list of remedies.

    Fix: Under section 135(3), no damages other than nominal or account of profits where the defendant was unaware, had no reasonable ground to believe the mark was registered, and ceased use forthwith on becoming aware. The same applies for certification and collective marks.

Worked examples

Example 1

Sundaram Foods Ltd holds a registered trade mark for packaged tea. Ravi, a trader, sells his own tea in packs bearing an identical mark. Sundaram sues for infringement. Advise on the likely outcome and the reliefs.

Show the solution
  1. Provision: Section 29(1) and (2)(c) say a registered mark is infringed by a non-owner who uses an identical mark in the course of trade for identical goods.
  2. Facts: Sundaram's mark is registered. Ravi is neither proprietor nor permitted user. He sells tea, the same goods, under an identical mark in the course of trade.
  3. Analysis: This is a case under section 29(2)(c). Under section 29(3) the court presumes likely confusion. Selling goods under the mark is use under section 29(6)(b).
  4. Exceptions: None in section 30 appears to apply, as Ravi uses the mark to identify his own goods, not Sundaram's.
  5. Remedies: Under section 135(1), Sundaram can get an injunction, damages or an account of profits at its option, and delivery-up of infringing labels and marks. Interim relief such as preservation of evidence is possible under section 135(2).
  6. Court: The suit lies in a District Court or higher under section 134.

Answer: Ravi has infringed Sundaram's registered mark under section 29(2)(c), and confusion is presumed under section 29(3). Sundaram can obtain an injunction, damages or an account of profits, and delivery-up, from a court not lower than a District Court.

Example 2

Meera started selling sweets under the name 'Annapurna Delights' ten years ago. The name is not registered but is well known in her town. Karan opens a shop nearby under the same name. Can Meera sue for infringement? What remedy does she have?

Show the solution
  1. Provision: Section 27(1) says no one can sue for infringement of an unregistered trade mark.
  2. Facts: Meera's name is unregistered. So an infringement action is not available to her.
  3. Alternative: Section 27(2) preserves actions for passing off. Section 134(1)(c) allows a passing off suit for registered or unregistered marks.
  4. Analysis: Meera has ten years of goodwill. Karan uses an identical name for the same goods in the same area. Customers are likely to think his shop is hers, which is a misrepresentation causing likely damage.
  5. Remedies: Under section 135(1), the relief in passing off includes injunction, damages or account of profits, and delivery-up. Damages are barred under section 135(3)(c) only if Karan proves he was unaware, had no reasonable ground to believe the mark was in use, and stopped forthwith once aware.
  6. Court: Suit lies before a District Court or higher.

Answer: Meera cannot sue for infringement under section 27(1), but she can bring a passing off action, which section 27(2) saves. She can seek an injunction, damages or an account of profits, and delivery-up, subject to the innocent-defendant bar in section 135(3)(c).

Exam tips

  • Always begin by checking registration. It decides between infringement and passing off, and examiners reward this first step.
  • Cite section numbers for each limb of section 29 and for relief under section 135. Case studies lose marks without them.
  • Learn a clean comparison between infringement and passing off: statutory against common law, registered against unregistered, and what must be proved.
  • For short notes on exceptions, list the main items of section 30 with one example each, and mention exhaustion with its limit in section 30(4).
  • Use the ICSI answer pattern: provision, facts and analysis, conclusion.

Practice questions from Law relating to Trade Marks

Infringement, Passing Off and Remedies in other exams

The same ground in other exams, if you are preparing for more than one or want another angle on it.

Infringement, Passing Off and Remedies: frequently asked questions

What is the difference between infringement and passing off?

Infringement is a statutory action available only for a registered trade mark under section 29. Passing off is a common law action that protects goodwill and is available for unregistered marks too, as saved by section 27(2). Infringement focuses on the mark; passing off focuses on misrepresentation and damage to goodwill.

What remedies are available for trade mark infringement in India?

Section 135(1) provides an injunction and, at the plaintiff's option, either damages or an account of profits, with or without delivery-up of infringing labels and marks. Section 135(2) allows ex parte injunctions and interim orders for discovery, preserving evidence and restraining disposal of assets.

Which court hears a trade mark infringement suit?

Section 134 requires the suit to be filed in a court not inferior to a District Court. The plaintiff may sue where he actually and voluntarily resides, carries on business or personally works for gain.

Is selling genuine branded goods bought from the market infringement?

No. Section 30(3) says that selling lawfully acquired goods that were put on the market under the mark by the proprietor or with his consent is not infringement. This does not apply if the proprietor has legitimate reasons to object, such as goods whose condition has been changed or impaired.