Acting against trademark infringement and passing off

Law

Section 29, Trade Marks Act 1999

Unregistered marks

Passing off (Section 27(2))

Forum

Commercial Court or High Court

Relief

Injunction, damages, delivery up

Infringement and passing off

Section 27(2) preserves passing off actions, so a business without a registration is not helpless. But registration makes enforcement much easier, which is why registering the mark early matters. Most suits plead both causes of action together.

What counts as infringement

Section 29 covers several situations: use of an identical mark for identical goods, where confusion is presumed; use of an identical or similar mark for similar goods where confusion is likely; and, for marks with a reputation in India, use even for dissimilar goods that takes unfair advantage of, or harms, that reputation. Use includes putting the mark on goods or packaging, selling or stocking goods under it, using it on business papers or in advertising, and using it as a trade name. Courts compare marks as a whole, from the view of an average buyer with imperfect recollection, and look at phonetic, visual and structural similarity.

Certain acts are not infringement under Section 30, such as honest descriptive use or comparative advertising that is honest and not misleading.

The cease and desist notice

A legal notice is usually the first step. It identifies your rights, the infringing use with evidence, and the demands: stop use, withdraw any conflicting trademark application, destroy or surrender stock, disclose sales, and give a written undertaking. A firm, accurate notice resolves many disputes without litigation.

Sometimes a notice is not advisable. If the infringer is likely to destroy evidence or move stock, or is a counterfeiter, it is often better to go straight to court and seek an ex parte order. If you have received a notice, do not ignore it or reply casually: a careful reply that records your own adoption and use is important evidence later.

Filing a suit and interim injunction

Trademark disputes are "commercial disputes" under the Commercial Courts Act, 2015, so suits are filed in the Commercial Court or the commercial division of a High Court, depending on value and the forum. Under Section 12A, a plaintiff must first attempt pre-institution mediation, unless the suit seeks urgent interim relief. Infringement suits usually do seek an urgent injunction, which is why most proceed directly.

The court considers a prima facie case, the balance of convenience and irreparable harm. An interim injunction restraining use can be granted at the first hearing, sometimes ex parte. Delay weakens the claim to urgent relief, so do not wait months after learning of the infringement.

• Local commissioner (Anton Piller) orders: the court appoints a commissioner to visit the premises, inventory and seize infringing goods without prior notice.
• John Doe (Ashok Kumar) orders: injunctions against unknown persons, used against street sellers and websites selling counterfeits.
• Online infringement: orders directing marketplaces, domain registrars and platforms to take down listings or suspend domains.

Final relief and criminal remedies

Under Section 135 the court may grant a permanent injunction, damages or an account of profits, delivery up of infringing labels and goods for destruction, and costs. Courts have increasingly awarded actual costs and, in clear cases, damages based on the scale of infringement. Evidence of the defendant's sales and of your losses must be built from the start.

Most infringement cases do not reach a final judgment. Once an interim injunction is granted, defendants often settle by agreeing to stop use, rebrand within a fixed period, surrender stock and pay costs. The settlement is recorded before the court or the mediation centre so that it can be enforced like a decree.

Applying a false trademark and selling goods with a false trademark are offences under Sections 103 and 104, punishable with imprisonment of six months to three years and a fine. Before a police officer searches and seizes goods without warrant under Section 115, the opinion of the Registrar must be obtained. Criminal complaints are effective against counterfeiters but should be coordinated with the civil case.

Before you act: a checklist

• Confirm your own title: registration in the right name, renewed, and any assignment recorded.
• Collect dated proof of your first use and reputation.
• Document the infringement: test purchases with invoices, photographs, screenshots with dates and URLs.
• Check whether the infringer has filed a trademark application, which you may need to oppose.
• Decide on the forum and whether to send a notice or move court directly.

If you are accused of infringement

Receiving a notice or a summons is not the end of your brand. Common defences include:

• Prior use: under Section 34, a registered proprietor cannot stop a person who has continuously used the mark from a date earlier than the proprietor's use or registration, whichever is earlier.
• No likelihood of confusion: the marks, goods, trade channels or buyers are genuinely different.
• Invalid registration: the plaintiff's mark is descriptive, was not used for five years, or was registered in bad faith, which is raised through rectification.
• Honest descriptive use or permitted use under Section 30.
• Acquiescence: the plaintiff knew of your use for a long time and did nothing, which can defeat or weaken an injunction claim.

Respond to a notice in time with a measured reply, and preserve your own evidence of adoption and use. If a suit is filed, the written statement in a commercial suit must be filed within the strict time limits of the Commercial Courts Act, so engage counsel as soon as summons is served. Sometimes a commercial settlement, such as rebranding over an agreed period or limiting the mark to certain goods, is the better outcome for both sides.

Documents you need

To act quickly we need:

• Trademark registration certificate or application details
• Evidence of your first use, sales and advertising
• Samples, photographs or invoices of the infringing products
• Screenshots of infringing websites or listings with dates
• Details of the infringer: name, address, GST number if known
• Any correspondence or notice already exchanged
• Board resolution or authority to sue, for companies

How we handle it for you

1. Assessment

   We review your rights and the infringing use and give a written view on the strategy.

2. Evidence

   Test purchases, investigation and documentation are arranged to court standard.

3. Notice or suit

   A cease and desist notice is sent, or a suit with an interim injunction application is filed directly.

4. Interim orders

   We argue for injunction, local commissioner or takedown orders.

5. Resolution

   Settlement with undertakings, or trial for permanent injunction and damages.

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Frequently asked questions