In short. Trademark infringement under section 29 of the Trade Marks Act 1999 protects registered marks; registration does much of the proving. Passing off, preserved by section 27(2), protects the goodwill of any trader and needs proof of reputation, misrepresentation and damage. In infringement, copying the essential features is enough even if the defendant adds distinguishing matter; in passing off, added matter can defeat the claim.
The two claims look alike in a courtroom. Both are usually filed together, both ask for an injunction to stop a rival using a confusing mark, and both are decided by the same judge on the same evidence of the marks side by side. But they protect different things, and the difference decides cases. A brand owner without a registration can only sue in passing off and must prove its reputation from scratch. A brand owner with a registration has a shortcut for the goods it registered, but may still need passing off for goods outside the registration or for copied packaging.
This post explains the difference in practical terms: what you must prove, how courts test similarity, what the defendant can say, where to sue in Delhi, and what you can get. It assumes you already know your registration position; if not, start with trademark registration in India, step by step. For the wider practice, see our page on trademark and copyright laws.
- Infringement
- Sections 28 and 29, Trade Marks Act 1999; registered marks only
- Passing off
- Common law action, preserved by section 27(2); any mark with goodwill
- Court
- Not below a District Court (section 134); Delhi High Court for suits above ₹2 crore
- Commercial suit
- IP disputes are commercial disputes; section 12A mediation unless urgent relief is sought
- Remedies
- Injunction, damages or account of profits, delivery up (section 135)
- Limitation
- Three years from the act complained of; each sale is a fresh wrong
What is the difference between trademark infringement and passing off?
Infringement is the violation of a statutory right. Section 28 gives the registered proprietor the exclusive right to use the mark for the goods or services it is registered for, and section 29 says when someone else's use infringes that right. Section 27(1) makes it plain that no one can sue for infringement of an unregistered mark. The claim is about the register: your registration, their use.
Passing off is older and wider. It is a common law action against a trader who misrepresents his goods or business as someone else's, and section 27(2) expressly preserves it. It protects the goodwill of a business, not a mark as such. The claim is about the market: your reputation among buyers, their deception of those buyers, and the harm it causes you.
The Supreme Court drew the line clearly in Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories (1965). Infringement is a statutory remedy for the vindication of the exclusive right to use a registered mark. Passing off is an action for deceit. The tests overlap, because both turn on whether the marks are confusingly similar, but the elements and the defences differ.
Infringement and passing off side by side
The table sets out how the two claims differ on the points that usually decide a case.
| Point | Infringement | Passing off |
|---|---|---|
| Source of the right | Statute: sections 28 and 29, Trade Marks Act 1999 | Common law, preserved by section 27(2) |
| Registration needed | Yes, valid and subsisting | No; works for registered and unregistered marks |
| What the plaintiff proves | Registration, and use of an identical or deceptively similar mark in the course of trade | Goodwill in India, misrepresentation likely to deceive, and damage or likely damage |
| Goods covered | Registered goods and similar goods; dissimilar goods only for marks with a reputation (section 29(4)) | Any goods where buyers are likely to be deceived |
| Added matter or different packaging | No defence if the essential features of the mark are copied | Can defeat the claim if it removes the likelihood of deception |
| Typical defences | Sections 30, 33, 34, 35; invalidity of the registration (section 124) | No goodwill, no confusion, distinguishing features, delay |
| Where to sue | Where the plaintiff carries on business, or where the cause of action arose (section 134(2)) | Section 20 CPC: where the defendant resides or works, or the cause of action arose |
| Remedies | Injunction, damages or account of profits, delivery up | The same |
The provisions that matter
Sections 27 and 28
Section 27(1): no infringement action for an unregistered mark. Section 27(2): nothing in the Act affects rights of action for passing off. Section 28(1): registration gives the exclusive right to use the mark for the registered goods and services and to obtain relief for infringement. Section 28(3): where two persons are registered proprietors of identical or nearly resembling marks, neither gets an exclusive right against the other merely by registration.
Section 29
Section 29(1) to (3) cover use of an identical or similar mark for identical or similar goods where it is likely to cause confusion, and section 29(3) presumes confusion where both the mark and the goods are identical. Section 29(4) protects a registered mark with a reputation in India against use for dissimilar goods that takes unfair advantage or is detrimental to its distinctive character or repute. Section 29(5) covers use of the mark as a trade name for the registered goods. Sections 29(6) to (9) define use broadly: labels, packaging, imports, exports, invoices, advertising and even spoken use.
Sections 30, 33, 34 and 35
Section 30 sets limits: honest descriptive use, use in comparative advertising in accordance with honest practices, and use of one's own registered mark. Section 33 stops the owner of an earlier mark who has knowingly acquiesced for five years in the use of a later registered mark from challenging that use. Section 34 protects a prior user's continuous use from before the plaintiff's use or registration. Section 35 protects bona fide use of one's own name or place of business.
Sections 124, 134 and 135
Section 124 deals with a defendant who challenges the validity of the plaintiff's registration; the suit is stayed if rectification is pending or the court finds the plea tenable, while interim orders can still be passed. Section 134 requires suits to be filed in a court not inferior to a District Court, and lets the plaintiff sue for infringement where it carries on business. Section 135 lists the reliefs: injunction, damages or an account of profits, and delivery up of infringing labels and marks.
What must you prove for trademark infringement?
Four things. First, that you are the registered proprietor (or a registered user) and the registration is valid and subsisting; the certificate and a current status printout, or a legal use certificate, prove this. Second, that the defendant is using a mark in the course of trade, which includes labels, packaging, invoices, websites, marketplaces and advertising. Third, that the defendant's mark is identical with, or deceptively similar to, yours. Fourth, that the use is for goods or services covered by the registration or similar to them, or, for a mark with a reputation in India, for dissimilar goods in circumstances that section 29(4) covers.
You do not have to prove your reputation for an ordinary infringement claim, and you do not have to prove that anyone was actually deceived. Where the marks and the goods are both identical, section 29(3) presumes the likelihood of confusion. This is why registration is valuable in litigation: much of what a passing off plaintiff has to establish with years of evidence, an infringement plaintiff gets from the register.
The registration also defines the limits. If your mark is registered for garments in class 25 and the defendant uses a similar mark for footwear, you will argue that footwear is a similar good; for bags, the argument is weaker; for furniture, you are in section 29(4) territory and must show reputation. Any disclaimer on your registration also limits the claim: you cannot sue for infringement over a disclaimed word on its own.
What must you prove for passing off?
The three elements, often called the classic trinity: goodwill, misrepresentation and damage. Goodwill means an established reputation among the relevant buyers, attached to the mark or get-up, at the date the defendant started using its mark. Misrepresentation means the defendant's conduct is likely to lead buyers to believe its goods or business are yours or connected with you; intent is not required, though proof of copying helps. Damage means actual or likely harm to your goodwill: lost sales, diverted customers, or the risk of your name being tied to inferior goods.
Goodwill must exist in India. In Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries (2017), the Supreme Court held that a foreign brand's worldwide fame is not enough; the plaintiff must show that its reputation had spilled over into the Indian market by the relevant date. For a domestic business, the question is usually narrower: was the reputation established among the buyers of these goods in the region where the defendant trades, before the defendant began?
Passing off can be brought even against a registered proprietor. In S. Syed Mohideen v P. Sulochana Bai (2016), the Supreme Court held that the rights of a prior user under passing off are superior to registration, so a later registered proprietor can be restrained at the suit of an earlier user who proves goodwill. This matters where a rival has registered a mark that you were using first: you do not have to wait for rectification to sue.
Why added matter and packaging matter so much
The clearest practical difference between the two claims is the effect of what the defendant adds. In infringement, if the defendant has taken the essential features of your registered mark, it does not help him to print his own name on the pack, use a different colour or add a disclaimer. The Supreme Court said so in Kaviraj Pandit Durga Dutt Sharma: where the marks are identical or the essential features are copied, the court will not inquire whether the get-up or other matter distinguishes the goods.
In passing off, those same additions can decide the case for the defendant. Because the question is whether buyers are actually likely to be misled, a defendant who uses a similar word but a completely different trade dress, prominently shows his own name, and sells through different channels may escape. That is why a plaintiff relying only on passing off has to show the whole picture of the market, and why trade dress (the colour scheme, shape and layout of packaging) is often the centre of a passing off claim.
When Advocate B.K. Singh drafts a trademark plaint, he pleads passing off alongside infringement even when the client holds a registration. The registration may not cover the exact goods the defendant sells, the defendant may attack its validity, or the defendant may have copied the packaging as well as the name. Passing off covers those gaps, and pleading it costs nothing extra.
How do courts decide whether marks are deceptively similar?
Through the eyes of the average buyer of the goods, with imperfect recollection. In Amritdhara Pharmacy v Satya Deo Gupta (1963), the Supreme Court compared 'Amritdhara' and 'Lakshmandhara' and asked how an ordinary buyer, who has seen one mark and does not have the two side by side, would react to the other. It found the overall similarity of the marks likely to confuse. The test is overall impression, not a letter-by-letter comparison.
In Cadila Health Care v Cadila Pharmaceuticals (2001), the Court listed the factors: the nature of the marks (word, label, composite); the degree of resemblance, phonetic, visual and in idea; the nature of the goods; the similarity in the nature, character and performance of the goods; the class of buyers and the care they are likely to exercise; the mode of purchase and placing orders; and any other surrounding circumstances. It added that for medicines, where confusion can harm health, courts should be stricter.
Some practical points follow. Phonetic similarity weighs heavily in India because many goods are ordered by name, over the counter or the phone. A common descriptive element shared by both marks counts for less, because no one can monopolise it. Courts look at the dominant part of the mark while still judging the whole. And the more careful and expensive the purchase, the less likely confusion is: a buyer of an industrial machine reads the nameplate; a buyer of a packet of biscuits at a kirana shop does not.
What defences can the other side raise?
In an infringement suit, the defendant will often attack the registration itself: that it should never have been granted, or should now be removed for non-use. Under section 124, if that plea is tenable, the suit is stayed while a rectification petition is decided by the High Court, but the court can still grant or refuse interim relief in the meantime. The defendant may also rely on its own registration (section 28(3) and section 30(2)(e)), prior continuous use from before the plaintiff's use or registration (section 34), honest use of its own name (section 35), descriptive use (section 30), or the plaintiff's knowing acquiescence for five years in the use of the defendant's registered mark (section 33).
In a passing off suit, the defences go to the elements. The defendant argues that the plaintiff had no goodwill in that market at the relevant time, that the marks or trade dress are different enough that no buyer would be misled, that the shared element is descriptive or common to the trade, or that both have traded side by side for years without confusion. Delay is raised in both kinds of suit, but its effect is limited; the Supreme Court said in Midas Hygiene Industries v Sudhir Bhatia (2004) that in infringement cases an injunction should normally follow and mere delay is not enough to refuse it, though long delay with knowledge can still count against a plaintiff on the balance of convenience.
Can you sue for infringement and passing off together?
Yes, and it is the usual practice. A single suit can claim both, with the same evidence on the marks and with separate pleadings on registration and on goodwill. The court may grant relief on one ground and refuse it on the other: an injunction for infringement for the registered goods and for passing off for the rest, for example.
Jurisdiction needs care. Section 134(2) lets the plaintiff sue for infringement where it carries on business, which is convenient. The Supreme Court held in Dhodha House v S.K. Maingi (2006) that this special provision does not extend to a passing off claim, which follows section 20 of the CPC: where the defendant resides or carries on business, or where the cause of action arose. In practice, a combined suit is filed where both claims can be heard, and a defendant selling into Delhi through its website or online marketplaces often gives the Delhi courts jurisdiction over both. If the defendant trades only in another city and the plaintiff has only a passing off claim, the suit may have to be filed there.
Which court hears a trademark case in Delhi?
Trademark disputes are commercial disputes under the Commercial Courts Act 2015, so they go to commercial courts where the specified value is ₹3 lakh or more. In Delhi, suits valued above ₹2 crore go to the original side of the Delhi High Court, where its Intellectual Property Division hears IP matters. Suits below that go to the District Judge (Commercial) courts in the district court complexes, such as Saket, Patiala House, Tis Hazari, Karkardooma, Rohini and Dwarka. In Noida and Ghaziabad, commercial suits go to the commercial courts of the district judiciary. Our page on commercial courts in Delhi explains the procedure there.
Before filing a commercial suit, section 12A requires pre-institution mediation unless the plaintiff seeks urgent interim relief. Trademark plaintiffs usually do seek urgent relief, because each day of sales by the defendant does fresh harm, but the court will look at whether the urgency is genuine; a plaintiff who knew of the defendant for two years and did nothing will struggle to justify skipping mediation. The detail is in our post on pre-institution mediation in commercial suits under section 12A. Once the suit is filed, the defendant has at most 120 days to file its written statement, as explained in the 120-day written statement rule.
How a trademark suit usually runs
Collect evidence of the defendant's use
Make a test purchase with a proper invoice, take dated screenshots of listings and websites with a certificate for electronic records, and photograph the goods and packaging next to yours.
Decide whether to send a notice first
A cease and desist notice can settle simple cases, especially with honest traders. Against a deliberate copier it can backfire by warning him to hide stock or rush to court first, so many plaintiffs go straight to court with an urgent application.
Draft and file the plaint
Plead infringement and passing off together, with the registration, goodwill, the defendant's use and the comparison of marks. File the application for a temporary injunction under Order 39 rules 1 and 2 of the CPC, and, where needed, an application for a local commissioner to inspect and seize infringing goods.
First hearing and interim relief
The court may grant an ex parte ad interim injunction if the case is strong and urgent, or issue notice to the defendant. The local commissioner, if appointed, visits the premises and makes an inventory.
Pleadings and summary judgment
The defendant files its written statement within the commercial court limits. Where the defence has no real prospect, the plaintiff can seek summary judgment under Order XIIIA of the CPC as applicable to commercial suits.
Trial and final relief
If the case goes to trial, evidence is led by affidavit and cross-examination. The decree may grant a permanent injunction, damages or an account of profits, delivery up and costs. Many cases settle earlier, once the interim order is passed.
Evidence to collect before suing
For infringement
- Registration certificate and current status printout
- Legal use certificate from the Registry, if available
- Details of any disclaimer or condition on the registration
- Evidence of the defendant's use for the registered or similar goods
For passing off
- Earliest dated invoices bearing the mark and invoices for each later year
- Year-wise sales and advertising figures certified by a chartered accountant
- Advertising, press coverage, trade listings and distributor details
- Photographs of packaging and trade dress over the years
About the defendant
- Test purchase invoice and the product itself
- Screenshots of websites, marketplace listings and social media with dates
- Company and GST details, addresses and any trademark applications it has filed
- Evidence of actual confusion: misdirected calls, emails, reviews or complaints
What remedies can a court give?
The main remedy is an injunction: an order restraining the defendant from using the mark or anything deceptively similar for the goods in question. At the interim stage, courts weigh a prima facie case, the balance of convenience and irreparable harm. In trademark cases, a strong prima facie case often carries the other two, because continued use of a confusing mark harms goodwill in ways money cannot easily repair.
At the final stage, section 135 allows damages or an account of profits (the plaintiff chooses one), and an order for delivery up of infringing labels and goods for destruction or erasure. The Delhi High Court in particular has been willing to award damages and actual costs in IP cases, especially against defendants who ignore proceedings. For online infringers, courts have granted orders against unknown defendants and orders directing marketplaces and intermediaries to take down listings. Where the dispute is over a domain name rather than a product, see domain name disputes under INDRP and UDRP.
Is there a criminal remedy?
Yes, for falsification and false application of trademarks. Sections 103 and 104 of the Trade Marks Act punish applying a false trademark and selling goods bearing one, with imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh. The offences are cognizable, and under section 115 a police officer not below the rank of Deputy Superintendent of Police can search and seize, but must first obtain the Registrar's opinion on the facts.
The criminal route suits plain counterfeiting: fake goods sold under your exact mark. It is the wrong tool for an honest dispute about whether two different marks are confusingly similar, and police and magistrates are reluctant to treat such disputes as crimes. A complaint filed to put pressure on a competitor in a civil dispute can backfire badly, including in the civil suit.
A made-up example: one rival, two claims
Here's a made-up example. A Delhi company sells namkeen snacks under the mark 'Chatkara Bites', registered in class 30, in orange packets with a green band. A Ghaziabad manufacturer launches 'Chatkaara Bytes' in orange packets with a green band, and also sells a line of spice mixes and pickles under the same name, which the Delhi company does not make.
For the namkeen, the case is infringement: the registered mark covers snacks, the marks are phonetically almost identical, and it does not help the defendant that its own company name appears in small print on the back. For the spice mixes and pickles, the registration may not stretch that far, so the company relies on passing off: years of sales in Delhi and western Uttar Pradesh, the same trade channels (kirana shops and quick commerce apps), the copied orange and green trade dress, and two customer emails complaining about a 'Chatkara' pickle the company never made.
Because the defendant sells into Delhi through quick commerce apps, both claims are filed together in a commercial court in Delhi, with an urgent application. The court grants an interim injunction covering the namkeen on the infringement claim and the pickles and spice mixes on the passing off claim, pending the defendant's reply. The defendant's plea that its added company name distinguishes the goods fails on the infringement claim, as it would; on passing off it fails because the trade dress was copied as well.
Mistakes that weaken trademark suits
- Relying on registration alone. Not pleading passing off leaves gaps for goods outside the registration and for copied packaging.
- No proof of goodwill. A passing off claim without year-wise sales, advertising and dated invoices is an assertion, not a case.
- Waiting too long. Delay rarely defeats an infringement claim on its own, but it undercuts the urgency needed for interim relief and for skipping mediation.
- Suing in the wrong court. A passing off claim filed only on the strength of section 134(2) can be returned for want of jurisdiction.
- A loose test purchase. No invoice, no dated screenshots and no certificate for electronic records make the defendant's use harder to prove.
- Overreaching on a weak mark. Suing over a shared descriptive word, or a disclaimed one, invites a costs order and an attack on your registration.
- Using criminal law for a civil dispute. A police complaint over a similar-but-different mark rarely helps and often hurts.
What to do this week if someone is copying your brand
- Print your registration certificate and current status, and check any disclaimers or conditions.
- Make a test purchase with an invoice and keep the product sealed.
- Capture dated screenshots of the defendant's listings, website and social media.
- Ask your accountant for year-wise sales and advertising figures for your mark.
- Note when you first learned of the defendant's use; delay starts to count from then.
- Check whether the defendant has applied to register its mark, and diary any opposition window.
- Decide with your advocate whether a notice or an urgent suit is the right first step.
If you have received a notice instead
If you are on the other side, with a legal notice alleging infringement or passing off, do not ignore it and do not reply in anger. Check the sender's registration, its goods and any disclaimers, and your own adoption story and first use date. A careful reply, sometimes with an offer to change packaging or narrow use, can avoid a suit; a reply that admits copying will be annexed to the plaint. Our post on sending a legal notice and what to include covers how notices are used in court.
Whichever side you are on, the team of Advocate B.K. Singh at B.K. Singh & Associates can look at the marks, the registrations and the evidence, and tell you which claim is strong, where it should be filed and what to do first. You can reach us through the online legal enquiry form, and our page on trademark and copyright registration explains the registration side if your own mark is not yet protected. If the rival's application is still pending, an opposition may also help, as set out in trademark opposition: filing and defending.
Frequently asked questions
Can I sue for trademark infringement if my mark is not registered?
No. Section 27(1) of the Trade Marks Act bars infringement actions for unregistered marks. You can still sue for passing off if you can prove goodwill, misrepresentation and damage.
Can I file a passing off suit against a registered trademark owner?
Yes. The Supreme Court held in S. Syed Mohideen v P. Sulochana Bai (2016) that a prior user's passing off rights prevail over a later registration. You must prove that your goodwill existed before the defendant began using its mark.
What is the test for deceptive similarity in India?
Courts ask whether an average buyer with imperfect recollection would be likely to be confused, looking at the overall impression of the marks. The factors set out in Cadila Health Care v Cadila Pharmaceuticals (2001) include the resemblance of the marks, the nature of the goods, the class of buyers and the mode of purchase.
Does adding my own name to a similar mark avoid infringement?
Usually not. If the essential features of a registered mark are copied, added matter such as a company name or different packaging is not a defence to infringement. In a passing off claim, added matter can help the defendant if it genuinely removes the likelihood of confusion.
Where can I file a trademark suit in Delhi?
In a commercial court: the Delhi High Court for suits valued above ₹2 crore, and the District Judge (Commercial) courts in the district complexes for lower values. For infringement you can sue where you carry on business under section 134(2); passing off follows the ordinary rules of section 20 CPC.
Is pre-institution mediation needed before a trademark suit?
Section 12A of the Commercial Courts Act requires it unless the suit seeks urgent interim relief. Most trademark suits do seek urgent relief, but the court checks whether the urgency is real, so long delay can be a problem.
What is the limitation period for a trademark infringement suit?
Generally three years from the act of infringement under the Limitation Act. Because each sale is a fresh wrong, a continuing infringement can be sued on as long as it continues, though delay may affect interim relief and damages.
What damages can I get in a trademark case?
Section 135 allows damages or an account of the defendant's profits, at the plaintiff's choice, along with an injunction and delivery up of infringing goods. Courts also award costs, and the Delhi High Court has awarded damages against defendants who ignore proceedings.
Is trade dress protected in India?
Trade dress, meaning the overall look of packaging such as colours, layout and shape, is protected mainly through passing off. It can also be registered as a device or shape mark if it is distinctive.
Can a foreign brand sue for passing off in India without selling here?
Only if its reputation has reached Indian buyers by the relevant date. In Toyota v Prius Auto Industries (2017), the Supreme Court held that worldwide fame is not enough; goodwill must be shown in the Indian market.
Is trademark infringement a criminal offence?
Applying a false trademark and selling goods bearing one are offences under sections 103 and 104 of the Trade Marks Act, punishable with six months to three years and a fine. Police can search and seize after obtaining the Registrar's opinion. The criminal route suits counterfeiting, not genuine disputes about similarity.
What should I do if I receive a trademark infringement notice?
Do not ignore it and do not admit anything in a hurried reply. Check the sender's registration, goods and disclaimers, gather your own first-use evidence, and reply through an advocate, offering changes only where they make commercial sense.
Written and reviewed at B.K. Singh & Associates
Advocate B.K. Singh
Founder of B.K. Singh & Associates. MCA, LL.B., LL.M., with more than twenty years of practice before the Supreme Court, the Delhi High Court, district courts and tribunals across Delhi NCR. This article explains the general law as of 24 October 2026; it is not legal advice on your facts.