Registration of a trade mark is not compulsory. However, the Registration of the trade mark establishes that the registered owner is the proprietor of the mark covered by the registration. Obtaining registration is like having a reserved ticket for a journey even though Law doesn’t compel you to reserve a ticket for traveling.
In the case unregistered yet well known brands, the owner of the brand can initiate a passing off action. Differences between Passing Off action and trade mark infringement are given as under:
1In case ofTrade Mark Infringement, Mere possibility of confusion is enough for getting interim and final relief.
But in case of Passing Off Actual deception has to be proved for any relief.
2.Trade Mark infringement is actionable per se and the Registered Owner need not prove specific monetary damage because of the infringement.
In a Passing Off case, the owner of the unregistered brand has to prove actual damage because of the wrongful adoption.
Trade Mark registration is prima facie proof of ownership of the mark.
In a Passing off case, the Plaintiff has to lead evidence showing long uninterrupted use of the brand and the fact that the infringer adopted the mark knowing the goodwill of the Plaintiff’s mark
Registered owner can initiate proceedings within the Jurisdiction of a Court where the Owner / Plaintiff resides or carries on business.
Passing Off case can only be initiated in a place where the Defendant resides or carries on business or where any part of the cause of action arose.