Passing off, assignment, rectification, and offences under the Trade Marks Act

1. Is registration compulsory?

No. A trader may use an unregistered mark (often marked ™) and acquire rights in it by use. But registration gives substantial advantages, which is why it is advisable:

• the exclusive right to use the mark for the registered goods or services (section 28);
• a statutory action for infringement, in which the plaintiff need not prove goodwill or actual deception (section 29);
• the certificate is prima facie evidence of validity (section 31), and a mark registered in breach of section 9(1) cannot be declared invalid if it has acquired distinctiveness through use after registration (section 32);
• the plaintiff may sue where he himself resides or carries on business (section 134(2));
• the right to use the symbol ® and the word “registered” (falsely representing a mark as registered attracts a penalty under section 107);
• a basis for international registration under the Madrid Protocol (section 36D) and for customs border protection.

2. Passing off

Passing off is a tort: no man may sell his goods as those of another. In Reckitt & Colman Products Ltd. v. Borden Inc. (House of Lords, 1990), the “Jif Lemon” case, Lord Oliver stated the “classical trinity” the plaintiff must prove:

• Goodwill or reputation attached to his goods or services in the minds of the purchasing public, by association with a name, mark or get-up;
• Misrepresentation by the defendant, intentional or not, likely to lead the public to believe that his goods or services are the plaintiff’s; and
• Damage, or likelihood of damage, to the plaintiff’s goodwill.

In Laxmikant V. Patel v. Chetanbhai Shah, 2001 INSC 594, (2002) 3 SCC 65, the plaintiff had run a colour lab under the name “Muktajivan Colour Lab and Studio” in Ahmedabad for years; the defendant opened “Muktajivan Colour Lab and Studio” nearby. The Supreme Court held that passing off protects trade names as well as marks, that the defendant’s intention is not essential, and that where the plaintiff shows a prima facie case of passing off an interim injunction should ordinarily follow. It granted the injunction.

3. Infringement and passing off distinguished

The distinction was drawn in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 INSC 221, AIR 1965 SC 980.

• Nature. Infringement is a statutory remedy for violation of the exclusive right given by registration; passing off is a common law action for deceit, available whether or not the mark is registered.
• What must be proved. In infringement, if the essential features of the registered mark are copied, it is no defence that the get-up, packing or other added matter shows a different trade origin. In passing off, the defendant may escape by showing that added matter clearly distinguishes his goods.
• Goodwill. In passing off the plaintiff must prove goodwill and misrepresentation; in infringement he relies on registration.
• Scope. Passing off protects get-up, trade names, trade dress and unregistered marks; infringement is confined to the registered mark and, mostly, the registered goods.

Both may be joined in one suit, and the reliefs in section 135 apply to both (injunction, damages or account of profits, delivery-up). Section 134(1)(c) requires a passing off suit based on a mark to be filed in a court not inferior to a District Court.

4. Domain names

Passing off is also the main protection for domain names, since no Indian statute deals with them. In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., 2004 INSC 368, (2004) 6 SCC 145, the Supreme Court held that a domain name has all the characteristics of a trade mark and may be protected by an action for passing off; it restrained the use of “siffynet” against the prior user of “sify”. The topic is covered in detail in Unit III.

5. Assignment and transmission: sections 37 to 45

• The registered proprietor may assign the mark and give receipts for the consideration (section 37).
• A registered mark is assignable and transmissible with or without goodwill, for all or some of the goods (section 38); so is an unregistered mark (section 39). The older rule that a mark could pass only with the goodwill of the business has been given up.
• No assignment may create multiple exclusive rights in different persons for the same or similar goods, or split rights between parts of India, if confusion would result (sections 40 and 41).
• An assignment without goodwill takes effect only if the assignee applies to the Registrar within six months for directions and advertises it (section 42).
• The assignee must apply to register his title; until then the assignment is ineffective against a person acquiring a conflicting interest without knowledge of it (section 45).
• Use may also be licensed to a registered user (sections 48 and 49), whose use counts as the proprietor’s use, or to an unregistered permitted user.

6. Rectification of the register

• Section 57. Any person aggrieved may apply to the Registrar or the High Court to cancel or vary a registration for contravention of a condition, or to expunge or vary an entry made without sufficient cause, wrongly remaining on the register, or containing an error or defect. A mark registered in breach of section 9 or 11, or one that has become deceptive or generic, may be removed.
• Section 47 (non-use). A mark may be removed if it was registered without a bona fide intention to use and has not been used, or if for a continuous period of five years from entry on the register, up to three months before the application, there was no bona fide use.
• Before the Tribunals Reforms Act, 2021 these applications went to the IPAB; they now go to the High Court. The Delhi High Court has set up an Intellectual Property Division and rules for such proceedings.
• Where a defendant in an infringement suit pleads invalidity, the suit is stayed while he applies for rectification (section 124).

7. Offences and penalties: Chapter XII

• Section 102 defines falsifying a trade mark and falsely applying it.
• Section 103. Falsifying or falsely applying a mark, making dies for falsifying, applying a false trade description or false indication of origin: imprisonment from six months to three years and fine from fifty thousand to two lakh rupees, unless the accused proves he acted without intent to defraud.
• Section 104. Selling or hiring goods or providing services with a false mark: same punishment, unless the accused proves reasonable precautions, full disclosure of his source, or innocence.
• Section 105. Second or subsequent conviction: one to three years and fine of one to two lakh rupees.
• Section 107. Falsely representing a mark as registered: since the Jan Vishwas Act, 2023 (from 1 August 2024) a penalty of one-half per cent of turnover or five lakh rupees, whichever is less, imposed by an adjudicating officer under sections 112A and 112B.
• Sections 106, 108 and 109 were omitted by the same Act.
• Section 115. Offences under sections 103 to 105 are cognizable; a police officer not below the rank of Deputy Superintendent may search and seize without warrant, but must first obtain the Registrar’s opinion and abide by it. Trial is before a Judicial Magistrate of the first class or Metropolitan Magistrate.
• Section 114 makes companies and persons in charge liable.

How this is examined

January 2026: “Is registration of Trade Mark compulsory in India? Explain the consequences of passing off.” February 2025: a short note on “Passing Off”. For the essay, section 1 then sections 2 and 3, ending with the reliefs in section 135. For the short note, the trinity, Laxmikant Patel and the Durga Dutt distinction. Assignment, rectification and offences appear less often but are in the syllabus and make good short notes.