Parallel Paths of Protection: Decoding Sections 27 & 29 of the Trade Marks Act, 1999
- Prabhsimran Kaur
- Mar 24
- 9 min read
In India, the law governing the trade marks is embodied in the Indian Trade Marks Act, 1999 (hereinafter referred to as “the Act”). Two of the imperative provisions for brand owners are Section 27- which deals with the common law remedy of passing off- and Section 29- which deals with statutory infringement action of trade marks that are registered. While the two concepts, infringement and passing off, may be overlapping, they both, however, serve distinct but complementary roles in protecting brands/trade marks in India.
Section 27(2) of the Act
This provision deals with the common law action of passing off and ensures that even if a trade mark is not registered or if someone obtains a registration subsequently, a brand owner of an earlier used mark may initiate a passing off action. Hence, this section clearly protects a prior bona fide user who has built significant goodwill and having a registration is a not a pre-condition in initiating an action under passing off.
Key elements in Passing Off:
The Indian Jurisprudence follows the three ingredients for passing off:
Goodwill and/or Reputation of the mark amongst the relevant public;
Misrepresentation by the Defendant who is using an identical and/or deceptively mark for overlapping goods/services;
Damage or Likelihood of Damage to the Plaintiff’s goodwill.
Moreover, the test of confusion is often viewed in India from the perspective of an average consumer having imperfect recollection, viewing the goods/services in the market and confusing the source of origin of goods/services.
The case of Goethe Institut E.V. vs Abhishek Yadav & Anr.,[1] illustrates the Indian judiciary’s continued commitment to the primacy of the prior user rights preserved under Section 27(2) of the Act. The Court reaffirmed that the registration does not extinguish common law passing off rights especially where longstanding goodwill exists as with the plaintiff’s “Max Mueller Bhavan”. The plaintiff, a German cultural Institute, operates under the name “Max Mueller Bhavan”. The defendants run a competing institute under the names “Max Mueller Institute”/ “Max Mueller” to provide German language education. The defendants also have a registered trade mark for “MAX MUELLER INSTITUTE” in Class 41, since 2018. The Court found that the plaintiff has long prior use in India since 1957 and granted an interim injunction restraining the defendants from using “Max Mueller Institute”/ “Max Mueller” or similar names. The Court also inferred bad faith on part of the defendant as they initially used a different brand name and only adopted “Max Mueller” much later in the year 2018. By reading Section 27(2) alongside Sections 28 and 34[2] of the Act, the Court clarified that statutory exclusivity is subordinate to pre-existing reputation. However, an appeal in this case is still pending, but this case underscores how Section 27(2) functions as a corrective against the bad faith adoption, ensuring that the registrants cannot exploit registration to legitimatize deceptive conduct.
Section 29 of the Act
This Provision provides a statutory cause of action for infringement of a registered trade mark and to restrain others from unauthorised use of the mark in certain defined situations.
When Section 29 is applicable:
The Plaintiff under Section 29 must be the registered proprietor of the mark;
The Defendant uses the mark without authorisation from the registered proprietor;
The impugned mark is used by the Defendant in the course of trade;
The impugned mark used by the Defendant must fall within one of the categories i.e.,
Identical to the registered mark and used for identical goods/service;
Identical or similar to the registered mark and used for identical or similar goods/services likely to cause confusion;
Identical or similar to a well-known mark irrespective of similar/dissimilar goods/services, where such use takes unfair advantage or is detrimental to the distinctive character and repute of the mark.
The Plaintiff is only required to prove likelihood of confusion;
The Plaintiff may seek remedies in the form of injunctions, damages, destroying of infringing goods, etc.
In the case of Hotels.com, LP vs. Barath M L & Anr.,[3] the plaintiff is a global online hotel booking platform operating in India and internationally and is the owner and proprietor of the mark “HOTELS.COM”. The plaintiff came across the defendant’s trade mark applications for the mark “HOTELCOM”. Further, the plaintiff also has a mobile application in its trade name and the defendant also started using the identical/similar mark on its website as well as mobile application. Hence, the plaintiff filed a trade mark infringement action under Section 29 of the Act, passing off arguing the defendants’ mark is deceptively similar, misleads users and takes advantage of the plaintiff’s mark’s reputation and goodwill along with domain name infringement. The Court granted a permanent injunction restraining the defendant from using the mark “HOTELCOM” or any other deceptively similar mark, domain name or application. This judgment strongly reaffirms the principle of ‘initial interest confusion’ in Indian Trade mark law; even transient confusion can constitute similarity under Section 29 of the Act.
Coexistence of Sections 27 and 29
The Act also recognizes that:
Some rights arise from the use of a mark i.e., the goodwill of a brand, even when the trade mark is not registered;
Other rights arise from the registrations, wherein statutory entitlement is given to a registered proprietor.
In the case of Vaidya Rishi India Health Private Limited & Anr. vs. Suresh Dutt Parashar & Ors.,[4] the Delhi Hight Court made a significant clarification of the statutory limits of the infringement actions under Section 29 of the Act, holding that a registered trade mark owner cannot sue another registered proprietor for infringement in respect of the same or similar mark within the same classes. The dispute involved two registered proprietors of similar trade marks containing the words ‘VAIDYA RISHI’. The Court established that Section 29(1) expressly restricts infringement to acts by a person “not being a registered proprietor”, thereby excluding conflicts between two registered owners. However, by invoking Section 27(2), the judgment underscores that although infringement is barred, the common-law remedy of passing off, remains fully available, preserving the supremacy of goodwill and prior use. Hence, this reinforces the dual-rights structure of the trade mark law, where statutory exclusivity is cautious and bounded, while common-law registration is not an absolute shield when a party’s conduct amounts to representation or unfair competition. Importantly, this judgment strengthens the doctrinal clarity on the coexistence of the registered marks and sets a persuasive precedent favouring passing off actions over infringement in registered vs registered marks disputes. The Court’s reasoning is consistent with the position articulated by the Supreme Court in S. Syed Mohideen vs. P. Sulochana Bai[5], that a proprietor of a registered trade mark cannot maintain an action for infringement against another registered proprietor of an identical or nearly resembling mark. Subsequently, in the case of Keller Williams Realty, Inc. vs. Dingle Buildcons Private Limited & Ors.[6], a Division Bench of the Delhi High Court affirmed that an infringement action ordinarily cannot be maintained against a registered proprietor in respect of the use of its registered mark within the scope of its registration. However, the jurisprudence on this issue remains under judicial consideration in the case of Abros Sports International (P) Ltd. vs. Ashish Bansal[7], where the Delhi High Court has referred certain questions relating to infringement actions between registered proprietors to a larger Bench. Until a final authoritative pronouncement is delivered, the prevailing position continues to be guided by the principles laid down in the S. Syed Mohideen vs. P. Sulochana Bai[8] case.
Applicability- Which Section to use when?
Scenario 1: Unregistered brand in India
In case where one has been using their brand in India (or in export/import context) and built a significant goodwill amongst the relevant public, but has not registered their mark, one may rely on Section 27(2) of the Act-passing off- to protect their brand, if the three main ingredients -i.e., showing goodwill, misrepresentation, and damage- are fulfilled.
Scenario 2: Registered trade mark and infringing user for identical/similar mark and goods/services
In a scenario where one holds registration of trade mark in India and someone uses an identical and/or deceptively similar mark for overlapping/similar/identical goods/services without authorisation, one can file an infringement action under Section 29, and can also claim passing off.
Scenario 3: Registered brand and infringing use for dissimilar goods/services
In a scenario when one holds a trade mark registration but someone uses an identical/similar mark for dissimilar goods/services then the applicability of Section 29(4) of the Act arises. It is also required that the goodwill and reputation in India should be established and one should prove that the infringer is using the identical/similar mark for unfair advantage and detriment.
Section 4: Prior User vs Later Registrant
In a scenario when one has used the mark earlier and built goodwill in India and later someone else registers the identical/similar mark, then one may file a passing off claim despite the registration of the defendant. Since India follows the first to use rule, the registration does not extinguish the rights of a prior user. Moreover, the use of a brand in India may be established through wide range of materials, including websites, social media platforms, digital and print advertisement, brochures, catalogues, online marketplace listings, etc. Indian Courts recognize that in this digital age, even non-physical or online-only use can constitute as “use in the course of trade” for the purpose of maintaining or enforcing trade mark rights. However, in recent years, the threshold for proving reputation and goodwill in passing off actions has been significantly elevated by the Indian Judiciary. This includes proof of extensive sales, advertising expenditure, consumer recognition and evidence of spill-over reputation for foreign brands. As a result, the plaintiffs must present a comprehensive and well-documented material to successfully establish goodwill and succeed in passing off proceedings.
In the case of Dongguan Huali Industries Co. Ltd., vs. Anand Aggarwal and Ors.[9], the Plaintiff, a foreign manufacturer of furniture components, alleged trade mark infringement and passing off by the defendants in India for using the identical mark “HUALI”. The dispute arose despite the first defendant holding a statutory registration for “HUALI” in Class 20. The Delhi Hight Court underscored that statutory registration does not extinguish prior common law rights and a registered proprietor is not immune to a passing off claim where a prior user can establish the actual use and accrued goodwill in the market. Further, the Plaintiff claimed prior adoption, goodwill and reputation in the mark and alleged that the defendants were misrepresenting their goods in India as being associated with the Plaintiff. The Court concluded that the defendant’s adoption and registration of the mark amounted to dishonest attempt to mislead consumers into believing that their goods originated from the plaintiff, causing a substantial likelihood of confusion, dilution of brand equity and irreparable harm. Accordingly, the High Court granted an interim injunction retraining the defendants from using the “HUALI” mark or any other deceptively similar mark.
In the case of VIP Industries vs. Carlton Shoes Ltd.,[10] the Delhi High Court addressed the competing claims over the mark “CARLTON”, where both parties were the registered proprietors of the mark in the same class. On facts, Carlton Shoes Ltd., was found to be the prior user of the mark “CARLTON” in India since at least 2003 and had established substantial goodwill, which was prior to the commencement of the of the use “CARLTON” by VIP Industries in 2004. Further, VIP Industries failed to demonstrate any trans-border or Indian reputation preceding the Carlton’s adoption. The Court also held that the “Carlton Shoes Ltd provided enough material to establish existence of sufficient goodwill in India as would justify an action for passing off”. Consequently, the Court upheld the injunction restraining VIP Industries from using the “CARLTON” mark.
Scenario 5: Use of a trade name/corporate name
In case when an infringer uses a registered mark only as a trade name / corporate name (not as a brand name on goods/services) especially for similar/identical goods, the applicability of Section 29 (5) of the Act may applied.
The case of G4S Ltd vs. 4Group Safeguard & Security Services Pvt. Ltd.,[11] reinforces that the trade mark rights prevail over corporate name registration, emphasizing the limited protective effect of Ministry of Corporate Affairs/Registrar of Companies. Under Section 29(5), the Court held that using a registered mark as a part of the trade or corporate name constitutes infringement, even if the user is otherwise legally registered under company law. The plaintiff is a well-known global security services firm and claimed that ‘4GS’ which was used by the defendant in its corporate name, trade name and domain name is deceptively similar to the plaintiff’s registered mark “G4S” and would cause confusion, infringement and passing off. The Court confirmed an interim injunction restraining the defendants from using ‘4GS’ (and related similar name) and directed the removal of infringing content and compliance with the injunction, showing that continuing use could irreparably harm the plaintiff’s goodwill. Recently, the defendant filed a Special Leave Petition in the Supreme Court[12] challenging the Division Bench Order. The Supreme Court dismissed the Appeal on merits, and explicitly clarified that the dismissal was based on the legal substance of the case, rather than the technical deficiencies in the defendant’s citations. As a result, the injunction remains in force and the defendant is strictly prohibited from using “4GS” or any other related marks. Overall, the case illustrates the Section 29(5) of the Act, as a critical safeguard against misleading corporate branding aligning trade mark jurisprudence with global standards on brand protection.
Conclusion
Given India’s first-to-use orientation and coexistence of statutory and common law remedies, a brand enjoys broader protection. Even when one does not have a trade mark registration in India, but if significant goodwill is built around one’s brand in India, one can still bring a passing off action under Section 27 of the Act. Whereas, Section 29 of the Act, gives the statutory right to registered proprietors for infringement action. Hence, the two provisions, Sections 27 and 29, coexist and complement each other giving brand owners the flexibility and coverage across different scenarios.
Prabhsimran Kaur
Senior Associate
[1] CS(COMM) 541/2024 & I.A. 32184/2024
[3] CS(COMM) 1133/2024
[4] FAO (COMM) 122/2024
[5] (2016) 2 SCC 683
[6] FAO(OS) (COMM) 120/2022
[7] FAO(OS) (COMM) 140/2024
[8] Supra
[9] CS(COMM) 229/2023
[10] FAO(OS) (COMM) 151/2023
[11] CS(COMM) 276/2024
[12] Special Leave to Appeal C No. 5240/2026
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