Trademark Infringement vs Passing Off in India: Deceptive Similarity and Trans-Border Reputation

This article is for educational and legal awareness purposes only. It does not constitute legal advice or solicitation. Please consult a qualified advocate for advice on specific legal matters.

Overview

Two trademark owners can sue over the same set of facts and end up proving different things. One sues for infringement of a registered mark; the other, whose mark is unregistered, sues for passing off. The two causes of action often overlap on the facts — a rival trader using a confusingly similar name or label — but Indian courts have long treated them as resting on distinct legal foundations, with different questions to be answered and different defences available. This distinction, along with the test courts use to decide whether two marks are “deceptively similar,” and the doctrine that lets a foreign brand with no Indian sales still stop a copycat, are among the most frequently litigated questions in Indian trademark law. This article traces these three threads through Supreme Court and Allahabad High Court authority.

Statutory Framework

The governing statute is the Trade Marks Act, 1999. Two provisions frame the infringement/passing-off distinction directly.

Section 27 provides:

“27. No action for infringement of unregistered trade mark.— (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”

In other words, the statute itself draws the line: registration is a precondition for an infringement action, but passing off survives as a separate, registration-independent common-law remedy preserved by Section 27(2).

Section 29(1) defines infringement of a registered mark:

“29. Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.”

“Deceptively similar” is thus the statutory trigger for infringement liability, and — as the case law below shows — it is also the test courts apply, as a matter of common law, to passing off.

The Core Distinction: Infringement vs Passing Off

The foundational statement of the distinction comes from the Supreme Court’s 1964 decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, decided by a bench of Justices P.B. Gajendragadkar, J.C. Shah and N. Rajagopala Ayyangar.

The Court held that in an infringement action, once it is shown that the defendant’s mark is identical with or deceptively similar to the registered mark, the plaintiff’s case is made out — the burden of proving that the added matter (get-up, packaging, price, or other distinguishing features) removes the likelihood of confusion does not arise, because the statutory right in a registered mark is treated as if it were the right to the exclusive use of the mark itself. By contrast, in a passing-off action, the plaintiff must additionally prove that the defendant’s use of the mark or get-up is likely to deceive or cause confusion as to the origin of the goods, and the defendant may escape liability by showing that the accompanying material is sufficient to distinguish its goods from the plaintiff’s — a defence that is simply not available once statutory infringement of a registered mark is proved.

This proposition — that copying the essential features of a registered mark amounts to infringement regardless of surrounding differences, whereas passing off turns on the overall likelihood of deception — has been treated as settled law ever since and is routinely applied by High Courts, including the Allahabad High Court, in trademark appeals (illustrated below).

The Deceptive Similarity Test

Because “deceptively similar” is the operative phrase in both the statute and the passing-off enquiry, the next question is how courts decide it. The leading modern statement is the Supreme Court’s decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, decided on 26 March 2001 by a bench of Justices B.N. Kirpal, Doraiswamy Raju and Brijesh Kumar.

The dispute arose between two pharmaceutical companies that had once shared the “Cadila” corporate lineage before separating. Cadila Healthcare marketed an anti-malarial drug (for cerebral malaria caused by Plasmodium falciparum) under the trade mark Falcigo; the respondent, Cadila Pharmaceuticals, later marketed a drug for the same indication under the mark Falcitab. Cadila Healthcare sued for an injunction, alleging the second mark was deceptively similar and likely to cause confusion — a risk it argued was especially serious for medicinal products, where mistaken substitution can have life-threatening consequences.

The Court held that in an action for passing off on the basis of an unregistered (or, by extension, even a registered) trade mark, the following factors are broadly to be considered in deciding the question of deceptive similarity:

The nature of the marks — whether they are word marks, label marks, or composite marks combining both.
The degree of resemblance between the marks, phonetic or otherwise, and the similarity in idea it creates.
The nature of the goods in respect of which the marks are used.
The similarity in nature, character and performance of the goods of the rival traders.
The class of purchasers likely to buy the goods, having regard to their education, intelligence, and the degree of care they are likely to exercise in purchasing.
The mode of purchasing the goods or placing orders.
Any other surrounding circumstances relevant to the extent of dissimilarity between the marks.

The Court further held that the weight to be given to each factor varies with the facts of each case, and no fixed weightage can be applied uniformly. On the facts, the Court declined to finally decide the question itself and remitted the matter to the trial court to apply these factors — but the seven-factor framework it laid down has since become the standard reference point cited by trial courts and High Courts across India in deceptive-similarity disputes, including the Allahabad High Court decision discussed next.

Applying the Test: A 2024 Allahabad High Court Illustration

How this framework operates in practice is illustrated by the Allahabad High Court’s decision in M/S Sai Chemicals v. M/S Jai Chemical Works, Neutral Citation 2024:AHC:7630, decided on 17 January 2024 by Justice Rohit Ranjan Agarwal, in a First Appeal From Order arising from a suit before the Commercial Court, Kanpur Nagar.

The plaintiff manufactured and sold detergent powder under the registered trade mark and label “Hara Patta”, in use (through licence and later assignment) since 1996, with a distinctive label combining a green-yellow-red colour scheme, a leaf device, and a stylised sun-ray logo. The defendant began marketing a similar product under the mark “Tazza Patta”, using — the plaintiff alleged — a deceptively similar label, colour combination, font, and layout. The Commercial Court granted a temporary injunction restraining the defendant pending trial; the defendant appealed.

Because the appeal arose from an interlocutory injunction order, the High Court’s findings were, as the Court itself noted, confined to the prima facie stage and did not amount to a final adjudication of the parties’ rights, which remains for trial on evidence. Within that limited compass, the Court held as follows:

The marks were deceptively similar. Comparing the two labels side by side — as the Supreme Court’s earlier decision in Parle Products (P) Ltd. had directed courts to do — the Court found that the size, colour scheme, leaf device, and font of the two labels were “almost the same,” such that a purchaser who had seen one on an earlier occasion could easily mistake the other for it if shown on a later date. Cadila was placed before the Court in argument, though the Court’s own reasoning rested on other authority — including Kaviraj Pandit Durga Dutt Sharma, from which it quoted the proposition that where the essential features of a registered mark are copied, differences in get-up or packaging are immaterial to an infringement claim, whereas in passing off the defendant may escape liability only by showing the added matter sufficiently distinguishes the goods.
The defendant’s “publici juris” argument was rejected. The defendant argued that the word “Patta” (a generic Hindi term) could not be monopolised. The Court held that the plaintiff was not claiming exclusivity over “Patta” alone, but over the composite mark “Hara Patta” together with its distinctive label — so the publici juris doctrine, which requires the party invoking it to show the specific mark relied upon is genuinely of common right, did not assist the defendant.
The statutory presumption of confusion applied. Under Section 29(2)(c) and 29(3) of the Trade Marks Act, 1999, once a mark is shown to be identical with, or similar to, a registered mark used for the same goods, the Court is required to presume a likelihood of public confusion.
Balance of convenience favoured the prior registered user. The plaintiff’s registration long pre-dated the defendant’s claimed business, and earlier injunctions had already issued against other infringers of the same “Hara Patta” mark in 2003 and 2009.

The appeal was accordingly dismissed and the trial court’s injunction upheld, with a direction that the underlying suit be decided expeditiously.

Trans-Border Reputation: Passing Off Without Sale in India

A separate but related question is whether a brand that has never sold goods in India can still maintain a passing-off action against a local trader using the same or a deceptively similar mark. The Supreme Court addressed this in N.R. Dongre v. Whirlpool Corporation, 1996 Supp (5) SCR 369, decided on 30 August 1996 by a bench of Justices J.S. Verma and K. Venkataswami, in an appeal against the grant of a temporary injunction by the Delhi High Court.

Whirlpool Corporation had registered the mark “WHIRLPOOL” in India but allowed the registration to lapse; Indian defendants subsequently applied to register the same mark for washing machines on the basis of proposed (not yet actual) use. Whirlpool sued for passing off, relying on long prior use of the mark internationally and on the mark’s reputation reaching Indian consumers — through international publicity, magazines circulating in India, and awareness among the higher-income segment of Indian society — even though the defendants had marketed washing machines under the “WHIRLPOOL” name in India before Whirlpool itself resumed local sales.

At the interlocutory stage, the Supreme Court held that the finding of the courts below — that Whirlpool had acquired a trans-border reputation in the mark “WHIRLPOOL” extending to India, giving it a right to protect against invasion of that reputation — was not liable to interference. The Court reasoned that the principle underlying passing off is that a trader must not sell goods under the pretence that they are another’s goods, and that a prior user’s reputation, once shown to have travelled across borders to Indian consumers even without direct sales here, is entitled to protection against a later local user seeking to appropriate the goodwill attached to the name. The Court declined to disturb the injunction restraining the Indian defendants from using the “WHIRLPOOL” mark.

Because the appeal concerned only the grant of an interim injunction, the Supreme Court’s findings on trans-border reputation were, again, made on a prima facie basis pending final trial. The proposition — that reputation travelling into India through advertising, media, or the spillover of international commerce can found a passing-off claim independent of actual local sales — has nonetheless been treated by subsequent courts as an authoritative statement of the trans-border reputation doctrine in Indian trademark law.

Practical Points

Registration status determines the cause of action, not just the remedy. An unregistered mark cannot support an infringement suit under Section 27(1) — the only civil remedy available is passing off, which additionally requires proof of likely deception, unlike infringement of a registered mark.
The deceptive similarity enquiry is fact-heavy and factor-based, not a mechanical side-by-side letter count — the Cadila factors (nature of marks, class of purchasers, mode of purchase, and surrounding circumstances) are weighed together, with no factor treated as decisive in isolation.
Interlocutory findings on deceptive similarity or trans-border reputation are provisional. Both the Whirlpool and Sai Chemicals decisions arose from appeals against temporary injunctions; the underlying suits remained to be decided on full evidence, and the observations recorded were expressly stated not to bind the trial court’s final adjudication.
A generic or descriptive element within a composite mark does not, by itself, defeat protection of the composite mark — the publici juris defence requires the defendant to establish that the specific mark relied upon, taken as a whole, is genuinely open to public use.

Takeaway

The infringement/passing-off distinction, the deceptive similarity test, and the trans-border reputation doctrine are three separate but interlocking strands of Indian trademark jurisprudence, each traceable to Supreme Court authority spanning more than six decades — from Durga Dutt Sharma in 1964 to Cadila in 2001 — and each still being applied by High Courts to ordinary commercial disputes, as the Allahabad High Court’s 2024 decision in the “Hara Patta”/“Tazza Patta” detergent dispute shows. The common thread across all three is that Indian courts assess the likelihood of confusion from the perspective of an ordinary purchaser of average intelligence and imperfect recollection, not a meticulous comparison undertaken side by side in a courtroom — a standard that keeps trademark protection anchored in how marks actually function in the marketplace.

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