Passing Off vs Trademark Infringement: Understanding the Difference

How passing off protects unregistered brands and when infringement applies to registered marks.

Passing off is a common law remedy that protects unregistered goodwill and reputation. It requires proving three elements: goodwill, misrepresentation, and damage. Trademark infringement under S.40 TMO is a statutory remedy that requires a valid registration. The key distinction is that passing off protects the business's reputation regardless of registration, while infringement requires a registration certificate. Both remedies can be pursued simultaneously. In Pakistan, passing off claims are filed in the civil courts while infringement claims go to the IP Tribunal.

The intellectual property landscape in Pakistan has evolved significantly since the establishment of IPO Pakistan in 2012. With the IP Tribunal providing specialised adjudication and Pakistan's obligations under the TRIPS Agreement driving legislative reform, businesses and creators now have stronger tools for protecting their innovations and brands. However, enforcement remains challenging, particularly in the area of counterfeit goods and online piracy, making proactive registration and monitoring essential.

Pakistani courts have increasingly recognised the importance of IP rights. The Lahore, Islamabad, and Sindh High Courts have granted ex parte injunctions in meritorious infringement cases, and the criminal provisions of the Trade Marks Ordinance and Copyright Ordinance provide a meaningful deterrent when enforced through the FIA and local police. For businesses operating across borders, Pakistan's membership in the Paris Convention, PCT, and Madrid Protocol (for trademarks) provides mechanisms for international protection.

How LexForm Can Help

LexForm provides comprehensive IP legal services across Pakistan, the UK, and the US. We handle trademark registration, patent filing, copyright enforcement, IP litigation before the IP Tribunal and High Courts, licensing agreements, and anti-counterfeiting actions. Our team has experience with IPO Pakistan, the UK Intellectual Property Office, and the USPTO. For a free initial assessment of your IP matter, contact us at info@lex-form.com or WhatsApp +92-323-2999999.