Trademark infringement and passing off deal with similar grievances, but are conceptually different. The difference between trademark infringement and passing off lies in the fact that the former is a statutory offence, while the latter is a common law offence. Another aspect that distinguishes the two lies in the cause of action and right to relief.
Common law remedies
The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories affirmed that an action for passing off is a common law remedy being in substance an action for deceit – the passing off by a person of his own goods as those of another.
This is not the gist of action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark in relation to those goods.
Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based law firm specializing in intellectual property issues.
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