Intellectual Property Rights - Law and Practice · Trademarks

Trademark Infringement and Passing Off Explained

Updated 11 October 2026 · Fact-checked

Infringement is the unauthorised use of a registered trademark, as set out in Section 29 of the Trade Marks Act, 1999. Passing off is a common law action that protects goodwill, even for unregistered marks (Section 27(2)). To answer, identify the type of mark, apply the Section 29 limb or the passing off elements, then state the reliefs under Section 135.

Understand Infringement and Passing Off

A trademark gives its owner a right to stop others from using the same or a confusingly similar mark. The law gives two routes. One is a statutory action for infringement of a registered trademark. The other is a common law action for passing off.

Under Section 27(1), no one can sue for infringement of an unregistered trademark. But Section 27(2) says the Act does not affect the right to sue for passing off. So an unregistered mark owner can still sue, if the owner has goodwill.

Section 29 lists the situations of infringement. Section 29(1): use of an identical or deceptively similar mark for goods or services for which the mark is registered, in a way that is likely to be taken as use as a trademark. Section 29(2): use that is likely to cause confusion or association because of identity or similarity of marks and goods or services. Section 29(3): where both mark and goods or services are identical, the court presumes confusion. Section 29(4): use of an identical or similar mark on dissimilar goods or services, where the registered mark has a reputation in India and the use, without due cause, takes unfair advantage of or harms its distinctive character or repute. Section 29(5): use of the registered mark as a trade name or business name for the registered goods or services. Other subsections deal with what counts as use (29(6)), applying the mark to labels or packaging knowingly without authority (29(7)), infringing advertising (29(8)) and spoken use (29(9)).

Passing off is not defined in the extract of the Act you must know. It is built on case law. The classical trinity is: goodwill owned by the plaintiff, misrepresentation by the defendant that is likely to deceive the public, and damage or likely damage to the plaintiff. In exams, you apply these three elements to the facts.

Deceptive similarity is judged from the view of an average person of ordinary intelligence and imperfect recollection. Courts look at the marks as a whole, their overall impression, sound, appearance, idea, the goods, the buyers and trade channels. Treat the test as a fact-based assessment. Do not name a case unless you are sure of it.

Key rules to remember

Infringement vs passing off: Infringement = registered mark + Section 29 use; Passing off = goodwill + misrepresentation + damage; Section 27(1) bars infringement action on unregistered marks; Section 27(2) preserves passing off.
Section 29(1): Identical or deceptively similar mark + goods/services for which registered + use as a trademark; Used by a person who is not the registered proprietor or permitted user, in the course of trade.
Section 29(2) and (3): Likelihood of confusion or association; presumed if mark and goods/services both identical; The presumption in 29(3) applies only to clause (c) of 29(2).
Section 29(4): Identical/similar mark + dissimilar goods + reputation in India + unfair advantage or detriment without due cause; All conditions must be met. This protects well-known marks.
Jurisdiction, Section 134: Suit before a District Court or higher; plaintiff may sue where he resides, carries on business or personally works for gain; The plaintiff-location rule in 134(2) applies to infringement suits, not to passing off under 134(1)(c).
Reliefs, Section 135(1): Injunction + (damages OR account of profits, at plaintiff's option) + delivery-up for destruction or erasure; Delivery-up may be ordered with or without the other reliefs.
Interlocutory orders, Section 135(2): Ex parte injunction; discovery of documents; preserving infringing goods or evidence; restraining disposal of assets; Asset restraint protects the plaintiff's ability to recover damages and costs.
No damages, Section 135(3): Only nominal damages if: certification or collective mark; or innocent infringer who ceased forthwith; Innocence requires both lack of awareness at the start and prompt cessation on becoming aware.

How to solve Infringement and Passing Off questions

Use this order for any case-based question on infringement or passing off. Write provision, analysis, conclusion.

1Identify whether the plaintiff's mark is registered. If not, Section 27(1) bars infringement and only passing off remains.
2If registered, compare goods or services and marks. Decide whether Section 29(1), 29(2), 29(4) or 29(5) fits. Name the subsection.
3Apply the similarity test: overall impression, sound, appearance, idea, goods, buyers, and the average consumer with imperfect recollection.
4If the case is passing off, test each element: goodwill, misrepresentation, damage. Apply facts to each.
5Check the court: District Court or above (Section 134). For infringement, note the plaintiff-residence rule in 134(2).
6State reliefs under Section 135(1) and any interim orders under 135(2).
7Check Section 135(3) for the bar on damages, if the defendant claims innocence or the mark is a certification or collective mark.
8Conclude clearly: liable or not, and the relief you would advise.

Quickest way: Register-Use-Remedy check

When to use it: When time is short and the facts are a short scenario.

Registered? If no, passing off only. If yes, infringement and passing off can both be pleaded.
Match the facts to one Section 29 limb in one line.
Write the confusion test in one sentence: average buyer, imperfect recollection, overall impression.
List the reliefs: injunction, damages or account of profits, delivery-up, plus interim orders.
Add one line on the Section 135(3) bar if the defendant looks innocent.

Common mistakes in Infringement and Passing Off

Saying an unregistered mark owner can sue for infringement.
Students mix up infringement and passing off.
Fix: Quote Section 27(1) and 27(2). Unregistered means passing off only.
Applying the presumption of confusion to every Section 29 case.
Section 29(3) is remembered loosely.
Fix: The presumption applies only where mark and goods or services are both identical, under 29(2)(c).
Missing the elements of Section 29(4).
Students focus on similarity and forget reputation and dissimilar goods.
Fix: List all conditions: identical or similar mark, dissimilar goods, reputation in India, and unfair advantage or detriment without due cause.
Granting both damages and an account of profits.
Section 135(1) is read as cumulative.
Fix: The plaintiff chooses either damages or an account of profits.
Treating innocence as a full defence to liability.
Section 135(3) is misread.
Fix: It only bars damages (beyond nominal) and profits. An injunction can still be granted. Both limbs, no knowledge and prompt cessation, must be shown.
Applying the plaintiff-location jurisdiction rule to passing off.
Section 134(2) is generalised.
Fix: 134(2) refers to clauses (a) and (b) of 134(1), meaning infringement and registered-mark rights.

Worked examples

Example 1

Sundaram Tea Ltd., Coimbatore, holds a registered mark 'GOLDLEAF' for tea. Kumar Traders, Guwahati, sells tea under 'GOLDLEAF' in similar packs. Sundaram sues. Advise on the cause of action and reliefs.

Show the solution

Sundaram's mark is registered, so infringement is available.
Kumar uses an identical mark on identical goods, in the course of trade. This is Section 29(2)(c), and under 29(1) too.
Under Section 29(3), the court presumes likelihood of confusion.
Sundaram may also plead passing off if it has goodwill and the similar packs mislead buyers.
Reliefs under Section 135(1): injunction, damages or an account of profits at Sundaram's option, and delivery-up of infringing labels and marks.
Under Section 135(2), Sundaram can seek an ex parte injunction, discovery, preservation of stock and evidence, and an order restraining Kumar from dealing with assets.

Answer: Kumar Traders infringes under Section 29, with confusion presumed. Sundaram can obtain an injunction, damages or profits (one of them), delivery-up and interim orders. It can add a passing off claim.

Example 2

Meera runs 'Annapurna Foods' in Pune selling pickles with a local reputation. She has not registered the mark. Rohit starts selling pickles under 'Annapurna Foods' in Pune with a similar label. Can Meera sue for infringement? What can she do?

Show the solution

Meera's mark is unregistered. Section 27(1) bars an infringement suit.
Section 27(2) preserves passing off.
Goodwill: she must show established reputation in Pune from her sales and brand use.
Misrepresentation: an identical name and similar label are likely to make buyers think Rohit's pickles are hers.
Damage: diversion of sales and harm to reputation are likely.
The suit lies before a District Court or higher under Section 134(1)(c). Reliefs under Section 135(1) apply, including injunction and damages or profits.
Rohit can avoid damages and profits under Section 135(3)(c) only if he proves he was unaware, with no reasonable ground to believe, that her mark was in use, and he stopped forthwith on learning of it.

Answer: No infringement suit lies. Meera can sue for passing off if she proves goodwill, misrepresentation and damage, and can seek an injunction and damages or profits.

Exam tips

Always begin by checking whether the mark is registered. It decides the cause of action.
Quote the exact subsection of Section 29 in your answer. Examiners reward precision.
For case-based questions, structure the answer as provision, analysis, conclusion, and give the reliefs.
Use the three passing off elements as sub-headings and match each to a fact.
Cite a case only if you are sure of its name and holding. Otherwise state the principle in words.

Practice questions from Trademarks

Infringement and Passing Off in other exams

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

CS ExecutiveInfringement, Passing Off and Remedies

Infringement and Passing Off: frequently asked questions

What is the difference between trademark infringement and passing off?

Infringement is a statutory action for a registered trademark under Section 29. Passing off is a common law action based on goodwill and works for unregistered marks too. Passing off needs proof of goodwill, misrepresentation and damage.

What are the elements of passing off?

The classical trinity is goodwill, misrepresentation and damage. The plaintiff must show a reputation attached to its goods or services. It must show that the defendant's use is likely to deceive the public, and that the plaintiff is likely to suffer harm.

What remedies are available in a trademark infringement suit?

Under Section 135(1), the court may grant an injunction, and at the plaintiff's option damages or an account of profits, with or without delivery-up of infringing labels and marks. Section 135(2) allows ex parte injunctions, discovery, preservation orders and asset-restraint orders.

Which court hears trademark infringement suits?

Under Section 134, a suit must be filed in a District Court or a higher court. For infringement, the District Court where the plaintiff resides, carries on business or personally works for gain also has jurisdiction.