Differences Between Passing Off and Infringement:

The action for passing off is not quite the same as an infringement activity. The activity for infringement is a statutory remedy whereas the action for passing off is a common law remedy. Accordingly, to establish infringement about a registered trademark, it is essential just to set up that the infringing mark is identical or deceptively similar to the registered mark and no additional evidence is required. On account of a passing-off action, demonstrating that the marks are indistinguishable or misleadingly similar alone isn't adequate. The utilization of the mark ought to probably misdirect or create confusion.

Further, in a passing-off action, it is important to demonstrate that the utilization of the trademark by the defendant is probably going to make the injury or harm the offended party's goodwill, though, in an infringement suit, the utilization of the marks by the respondent need not bring on any injury to the offended party. In any case, when a trademark is registered, registration is given only about a particular category of goods. Protection is, accordingly, provided distinctly to the goods. The defendant's goods need not be the same, in passing off action; it may be allied or even different.

In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was held by the Court that three elements are needed to be considered to establish an action for passing off, which are as follows:

(a) The first element in an action for Passing off, the term passing off itself alludes, that to restrain the defendant from passing off its goods and services to the public as that of the plaintiff's. It is an action to also safeguard the public but not only preserve the reputation of the plaintiff. The defendant should sell its goods and offer its services in a manner as laid down or as perceived to the public into thinking that the defendant's goods or services are for the plaintiffs.

(b) That second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion, the court must allow for the 'imperfect recollection of a person or ordinary memory.

(c) The third component of a passing-off action is a loss or its probability.

However, trademark enrollment under the Act just has an impact in India. To get trademark rights and protection in different nations it is important to utilize and additionally register the trademark in those nations. Trademark protection is regional in nature. A different registration should be made in every nation where insurance is desired. To acquire protection outside India, it is important to file applications in the concerned nations exclusively.

Furthermore, you ought to be mindful to apply for registration in a nation before you begin utilization of your trademark that nation. In certain nations, for example, Continental Europe, China, Japan and Indonesia, the primary individual to apply for registration will be given the rights to a trademark, as opposed to the individual who first uses the trademark. In this manner, another party could legally "steal" your trademark by applying for registration regardless of whether you were the principal individual to utilize the trademark.