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A Thin Line Between Infringement & Passing off

Intellectual property rights is a bowl made up of an intangible creations of one’s mind which includes implication of thoughts, creativity, inventions, filled up with certain aspects like; its protection by registration, various types of creations, procedures, infringement, etc.Whether we take it in regard with our day to day life, or even it is in a case of a fresher in a legal field, there are various concepts which are different in its execution, but its basics are intertwined. When it comes to the primary field of IPR, i.e. Trademark- it has two such aspects which need to be understood in its limelight. Infringement & Passing-off can be referred also as ‘two peas in a pod’ because both concepts deals with the deceptively similar mark used by the defendant, difference being, one is inclusive of goods of same nature while other, of being different as well.

‘Infringement’ leads to a violation of terms of law, agreement, etc. and ‘Passing-off’ refers to some false representation likely to induce a person to believe that the goods or services are those of another. Infringement has a statutory remedy but, passing off is, wherein Passing-off has a common-law remedy. So the question arises that what exactly isstatutory remedy?The answer is really simple, statutory remedies are those remedies which are available in a codified statute for the protection of IPR or can be taken as, it protects the rights of owners of the intellectual properties, whilst common law remedy is not within the ambit of any statute but is mainly based on unwritten common-laws inclusive of judge-made law, judicial precedents, rituals &customs. Registration plays a vital role when it comes to the term ‘Infringement’ but under ‘Passing-off’, there is no such mandatory prior condition.

Balancing the bowl with action and its remedies under the statute; Section 28-29 deals with the exclusive right of proprietor of registered trademark & its infringement, Section 27 can be taken as in reference with the concept of passing off, however Section 134-135 refers to the civil and criminal remedies, incase of ‘Infringement’ & ‘Passing-off’.Under Section 134- the suit of whether infringement or passing off shall be instituted where and under certain jurisdiction is being referred. And, under Section 135, reliefs under such instituted suits,is being discussed,well.

The difference between the two is been explained realistically under the Supreme court judgment, in the case of, DurgaDutt Sharma V. N.P. Laboratories1965 SCR (1) 737, wherein it was held that ” An action for passing off is a common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of an exclusive right to use the trade mark.”When it comes to passing off action identity or similarity of marks is not sufficient, there must also be likelihood of confusion. But in infringement, if the marks are identical or similar no further proof is required.