Trade Mark Infringement and Common Law Rights under Passing Off

[vc_row][vc_column][vc_column_text]India is one of the leading and fastest growing economies in the world. With the advent of globalization and liberalization, overseas business and domestic industries alike, consider India to be a credible, profitable and a highly competitive market.

It is imperative for the businesses to distinguish their goods and services from that of others and build reputation in the market for its sustenance and growth. Hence, the businesses depend upon their intellectual property rights, primarily, trade marks.

In view of the aforesaid developments and further, to harmonize trade mark management system, the Trade Marks Act, 1999 was enacted, which replaced the Trade and Merchandise Act, 1958. The Act of 1999 is in harmony with international treaties namely Paris convention for Protection of Industrial Property and TRIPS agreement.

The Trade Mark office has switched to electronic medium and aims for an effective paperless management system. The Trade Mark Office has also introduced e-filing of the applications for efficient and speedy redressal.

Under the aegis of the contemporary trade marks regime, there are primarily two kinds of remedies available to the owner of a trade mark:


Right to initiate an infringement action is a statutory right provided to the registered proprietor of a trade mark. Section 29 of the Trade Marks Act, 1999 lays down the various activities which would amount to infringement of a registered trade mark. A suit for infringement can be instituted before a District Court having appropriate jurisdiction, as per Section 134 of the Act and the proceedings of an infringement suit are governed by Code of Civil Procedure.

Since registration is the prima facie proof of ownership, the onus of establishing rights in the trade mark shifts on the defendant. Following are remedies which can be availed by the proprietor in an infringement proceeding:

  • Temporary Injunction;
  • Damages or account of profits;
  • Order for delivery of the infringing products;

Passing Off

Since Indian trade mark recognizes common law rights in a mark and does not mandate registration of the same, an action for passing off can be initiated by the owner of an unregistered mark against any third party.

This cause of action generally arises when the goods or services of an unregistered trade mark owner are passed off by a third party as his own goods or services. Passing off action can only be initiated in a place where the defendant resides or carries on business or where any part of the cause of action arose.[/vc_column_text][/vc_column][/vc_row]

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