Trademark Infringement vs. Passing Off in India (With Case Law)

Short answer: Trademark infringement is a statutory claim available only to the owner of a registered mark, decided by comparing the registered mark against the impugned one. Passing off is a common-law remedy available even without registration, decided by whether the defendant's overall conduct and get-up is likely to deceive customers into thinking they're buying from you. The two often run together in the same suit, but need separate evidence.

Infringement vs. Passing Off: The Practical Difference

If your mark is registered, infringement is usually the stronger, more direct claim — you compare the registered mark's essential features against the defendant's mark. If it isn't registered, or you want a fallback claim, passing off asks a broader question: taking the whole picture — name, packaging, get-up, reputation — is a customer likely to be deceived? Kaviraj Durga Dutt Sharma v. Navaratna Pharmaceutical is the founding authority on why these are analytically distinct claims.

Can Reputation Earned Abroad Protect You in India?

Yes, under the right facts. N.R. Dongre v. Whirlpool Corporation established the doctrine of trans-border reputation — a foreign mark's fame can reach India through advertising and publicity alone, and can support a passing-off claim even against someone who registered the mark in India first.

What Remedies and Penalties Are Actually Available?

Successful claimants can get a permanent injunction stopping further use, and in significant cases, substantial damages and costs. Mondelez/Cadbury India v. Neeraj Food Products is a recent, quantified example — the Delhi High Court awarded over ₹15 lakh in costs and damages on top of a permanent injunction after a decade-long infringement dispute.

Solved Examples

• N.R. Dongre v. Whirlpool Corporation — the doctrine of trans-border reputation.
• Mondelez/Cadbury India v. Neeraj Food Products ("Gems" v. "James Bond") — a recent, high-value example of the damages and costs courts will award.