Trademark Infringement

Trademark Infringement: complete guide

Introduction

Trademark infringement happens when someone uses a mark that is identical or deceptively similar to your registered trademark, in the course of trade, for goods or services in a way that is likely to confuse buyers or take unfair advantage of your brand. It can be a rival using a near-copy of your brand name, a seller passing off counterfeit products under your label, a new business adopting a logo that looks almost the same as yours, or a trader using your mark on packaging, invoices, signboards or online listings. Left unchecked, infringement diverts sales, damages the reputation you have built, and weakens the distinctiveness of your mark over time.

In India, the rights of a trademark owner and the remedies against infringement are set out in the Trade Marks Act, 1999. Section 29 of the Act explains what amounts to infringement of a registered mark, while the common law action of passing off, preserved by Section 27, protects unregistered marks that have built up goodwill. A trademark owner can file a civil suit for an injunction, damages or an account of profits, and the delivery up of infringing goods. In serious cases of counterfeiting, the Act also provides criminal remedies, including search and seizure by the police. Most trademark disputes are treated as commercial disputes and are heard by commercial courts or the commercial divisions of High Courts under the Commercial Courts Act, 2015.

Responding to infringement is not only about going to court. Many disputes are settled at the notice stage, through negotiation, or through mediation, without a full trial. The right approach depends on the strength of your rights, the scale of the infringement, the evidence available, the conduct of the other side and your business goals. A small trader who has copied a logo by mistake may agree to stop after a firm cease and desist notice, while an organised counterfeiting operation may call for urgent court action and a raid by a court-appointed commissioner.

Getting professional help early matters because the first steps often decide the outcome. Evidence of the infringing use needs to be gathered and preserved properly, the notice needs to be drafted so that it does not weaken your later case, and the right court and remedy need to be chosen. Delay can be used by the other side to argue that you accepted the use. Our team of trademark lawyers reviews your rights and the infringing use, advises on the options, and handles the matter from the first notice through to settlement or litigation, working with advocates who appear in court where required.

Who Needs It

This service is for any brand owner who believes their trademark is being copied or misused, and for businesses that have received a complaint of infringement. Typical clients include:

• Registered trademark owners who have found a competitor using an identical or similar name, logo, tagline or trade dress for the same or related goods or services.
• Owners of unregistered but established brands who can show prior use and goodwill, and want to stop others from passing off their goods or services as connected with them.
• Manufacturers and consumer brands facing counterfeit or look-alike products in physical markets, retail stores or online marketplaces.
• Restaurants, retail chains and franchise networks whose name or format has been copied by unrelated outlets in other cities.
• Online businesses and app developers whose brand is being used in domain names, app names, social media handles or keyword advertising by others.
• Owners of well-known marks who want protection against use of their mark even for unrelated goods or services.
• Businesses that have received a cease and desist notice or a court summons alleging infringement, and need a considered reply or defence.
• Licensors and franchisors whose former licensees continue to use the brand after the licence or franchise has ended.

Key Benefits

• A clear assessment of your rights. We review your registrations, the history of your use, the infringing mark and the market to tell you how strong your case is and what risks exist.
• Proper evidence from the start. We help you collect and preserve evidence such as test purchases, invoices, photographs, screenshots, sales data and records of actual confusion, in a form that can be relied on in court.
• A carefully drafted cease and desist notice. A firm, well-reasoned notice often resolves the matter without litigation, and it records your objection at an early date.
• Access to urgent court relief. Where the infringement is serious, we work towards filing a suit with an application for an interim injunction, and where justified, the appointment of a local commissioner to seize infringing goods.
• Settlement on your terms. Many disputes end in a written settlement under which the other party stops using the mark, destroys stock, changes its name or pays costs. We draft and negotiate these terms.
• Protection of brand value. Acting promptly helps keep your mark distinctive, protects your customers from confusion and shows the market that you enforce your rights.
• Defence support. If you are accused of infringement, we assess whether a defence such as prior use, honest concurrent use, descriptive use or a different overall impression applies, and respond accordingly.

Infringement and passing off, compared. An infringement action is available only for a registered trademark. The owner needs to show that the mark is registered and that the other party is using an identical or deceptively similar mark for goods or services covered by the registration, or in a way the Act treats as infringing. A passing off action is available whether or not the mark is registered, but the owner must prove goodwill in the mark, a misrepresentation by the other party that is likely to confuse the public, and actual or likely damage. Because passing off needs more evidence, registered owners usually plead both claims together.

Civil and criminal routes in practice. A civil suit is the main route for most businesses because it can lead to an injunction, damages and costs. The criminal route under Sections 103 to 105 of the Act is used mainly against counterfeiters. Offences relating to falsely applied trademarks are cognizable, and a police officer not below the rank of Deputy Superintendent of Police may search and seize infringing goods after obtaining the opinion of the Registrar of Trade Marks. The two routes can be pursued together where the facts justify it.

Eligibility and Legal Requirements

To take action for trademark infringement or passing off in India, the following points are relevant:

• Ownership of the mark. For an infringement claim, you must be the registered proprietor of the mark, or a registered user or licensee entitled to sue under the Act. For passing off, you must show that you have used the mark and built goodwill in it before the other party started its use.
• Use in the course of trade. The other party must be using the mark in the course of trade, for example on goods, packaging, signboards, invoices, advertisements, websites or business papers.
• Identical or deceptively similar mark. Courts compare the marks as a whole, looking at visual, phonetic and conceptual similarity, the nature of the goods or services, the class of buyers and the way the goods are sold. An average buyer with imperfect recollection is the usual test.
• Likelihood of confusion or unfair advantage. For similar marks or similar goods, a likelihood of confusion or association must be shown. For well-known marks, use on dissimilar goods can also infringe if it takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the mark.
• Defences available to the other side. The Act recognises defences such as honest description of goods, comparative advertising that follows honest practices, prior continuous use from a date before your use or registration, honest concurrent use, and acquiescence where the owner knowingly allowed use for a continuous period of five years.
• Jurisdiction. Under Section 134, a suit for infringement of a registered mark may be filed in a district court where the plaintiff actually and voluntarily resides or carries on business, as interpreted by the courts. A passing off claim, on its own, follows the general rules of civil procedure. Suits of the required value go to commercial courts or commercial divisions.
• Pre-institution mediation. Under Section 12A of the Commercial Courts Act, 2015, a commercial suit that does not seek urgent interim relief must first go through pre-institution mediation. Suits that seek urgent injunctions can be filed directly.
• Time limits. A civil suit for infringement is generally governed by a limitation period of three years. Infringement is usually a continuing wrong, so a fresh cause of action arises each day the use continues, but unexplained delay can still affect your chances of an interim injunction.

Trademark law in India develops through court decisions as well as amendments to the Act and Rules. We check the current legal position and procedure at the time of acting on your matter.

Step-by-Step Guide

1. Initial consultation. We discuss your brand, its history, your registrations and how you came to know about the infringing use. We also understand your goals, whether that is stopping the use immediately, recovering losses, or reaching a quick commercial settlement.
2. Rights and conflict review. We check the status of your registrations, the classes covered, any pending applications of the other party, and the dates of first use claimed by both sides. This tells us whether infringement, passing off or both can be claimed.
3. Evidence gathering. We guide you on collecting evidence: test purchases with invoices, photographs of products and premises, dated screenshots of online listings, advertisements, and any instances where customers were actually confused. Where needed, an investigator can be engaged to trace the source and scale of the infringement.
4. Strategy and options. Based on the evidence, we advise on the most suitable route: a cease and desist notice, a complaint to an online platform, opposition or rectification before the Registry, a civil suit, a criminal complaint, or a combination.
5. Cease and desist notice. We draft and send a legal notice setting out your rights, the infringing acts, and the steps the other party must take within a stated time, such as stopping use, withdrawing applications, destroying stock and giving a written undertaking.
6. Handling the reply and negotiation. We review the reply, if any, and advise on next steps. If the other side is willing to settle, we negotiate and draft a settlement agreement with clear undertakings and consequences for breach.
7. Mediation where applicable. If no urgent relief is sought, we initiate pre-institution mediation as required under the Commercial Courts Act and represent you in the mediation sessions.
8. Filing the suit. If the matter must go to court, we prepare the plaint, documents, statement of truth and applications for interim injunction and, where justified, for appointment of a local commissioner to visit the premises and seize infringing goods. Court fees are payable at actual.
9. Interim hearing and pleadings. The court may grant an ad-interim injunction at the first hearing, or after hearing both sides. The defendant files a written statement within the time allowed under the commercial suit rules, and documents are admitted or denied.
10. Trial, decree or settlement. If the matter is not settled, it proceeds to evidence and final arguments. The court may grant a permanent injunction, damages or an account of profits, delivery up of goods and costs. We advise on enforcement of the decree and on any appeal.

Documents Checklist

Proof of your rights:

• Trademark registration certificates and the current status of each registration
• Copies of pending trademark applications, if any
• Copyright registration for the logo or artwork, if available
• Assignment deeds or licence agreements, if the mark was acquired or is used under licence

Proof of use and goodwill:

• Earliest available invoices, bills or sales records showing use of the mark
• Year-wise sales figures, ideally certified by a chartered accountant
• Advertising and promotional material with dates, and year-wise promotional spend
• Product photographs, packaging, labels, catalogues and website extracts
• Media coverage, awards or certifications that show recognition of the brand

Evidence of infringement:

• Photographs of the infringing products, packaging or signboards
• Invoices from test purchases, with the date and place of purchase
• Dated screenshots of websites, online listings and social media pages
• Details of the infringing party, such as name, address, GSTIN or company details where available
• Any customer complaints, enquiries or messages showing confusion

For the business filing the action:

• Certificate of incorporation, partnership deed or proprietorship details
• Board resolution or authority letter authorising the person who will sign the pleadings
• Identity proof of the authorised signatory

How Long It Takes

The time needed depends on the route chosen and how the other side responds:

• Initial review and evidence collection: usually one to two weeks, depending on how quickly evidence is available and whether investigation is needed.
• Cease and desist notice: drafted and sent within a few working days after the review. The notice normally gives the other side a short period, often between 7 and 15 days, to respond.
• Settlement: where the other side is cooperative, a settlement can be concluded within a few weeks of the notice.
• Pre-institution mediation: the Commercial Courts Act sets a time frame of three months, which can be extended by a further two months with the consent of the parties.
• Interim injunction: in urgent cases, an ad-interim order can be obtained at the first hearing. Contested interim applications can take a few months.
• Full trial: a contested suit can take a few years to reach final judgment, although many suits end earlier through settlement or a consent decree.

We give you a realistic estimate at the start and update you at each stage.

Pricing

Pricing for Trademark Infringement matters is custom. Every dispute is different, so we quote our professional fee after reviewing your matter.

The main factors that affect the quote are:

• Whether you are enforcing your rights or defending a claim
• The number of marks, parties and locations involved
• Whether the matter is likely to end at the notice stage or needs a suit
• The need for investigation, test purchases or a local commissioner
• The court where the matter will be filed and the expected number of hearings
• Whether criminal proceedings or customs action are also needed

Your quote sets out what is included, such as the review, the notice, negotiation, mediation, drafting of pleadings and appearances, and whether the work is quoted stage by stage or as a package. Court fees, mediation charges, commissioner fees, investigator charges and other out-of-pocket costs are payable at actual and are shown separately.

Common Mistakes to Avoid

• Waiting too long to act. Delay gives the other party time to build its own reputation and can weaken a request for an interim injunction. Act as soon as you have reasonable evidence.
• Sending an informal or threatening message. A casual or exaggerated message can be used against you. Groundless threats of legal action can also expose the sender to a claim. Let a lawyer draft the notice.
• Not preserving evidence. Online listings and social media pages change quickly. Take dated screenshots, keep test purchase invoices and store physical samples safely.
• Overstating your rights. Claiming rights over descriptive words, or over goods not covered by your registration, can weaken your case. Your claim should match your actual registrations and use.
• Ignoring your own registration gaps. If your mark is unregistered or registered in the wrong class, file or correct applications quickly. A pending application does not stop a passing off claim, but registration strengthens your position.
• Skipping mediation where it is required. Filing a commercial suit without urgent relief and without pre-institution mediation can lead to the suit being returned or rejected.
• Ignoring a notice you have received. If you are accused of infringement, do not ignore the notice. A considered reply can prevent a suit or narrow the dispute.
• Settling without a written agreement. An oral promise to stop is difficult to enforce. Settlements should be in writing, with undertakings, timelines and consequences for breach.

What Happens After

Once the matter is resolved, a few steps help protect your brand going forward:

• Monitor compliance. Check that the other party has actually stopped use, changed its name, withdrawn its applications and removed online listings as agreed or ordered.
• Enforce the order or settlement. If an injunction or settlement is breached, an application can be filed for contempt or for enforcement of the decree.
• Strengthen your registrations. File applications for any variations of your mark, logo or tagline, and in any additional classes that match your business, so future disputes are easier to win.
• Set up a trademark watch. A watch service tracks new applications and published marks that are similar to yours, so you can oppose them before they are registered.
• Record your mark with customs. If counterfeit goods are imported, recording your rights with customs under the applicable rules allows suspect consignments to be held at the border.
• Keep evidence of use updated. Maintain yearly records of sales, advertising and recognition, which will be useful in any future dispute.

FAQs

Can I take action if my trademark is not registered?

Yes. You can file a passing off action based on prior use and goodwill. However, you will need to prove that your mark has a reputation, that the other party's use is likely to mislead the public, and that you have suffered or are likely to suffer damage. Registration makes enforcement much simpler.

What is a cease and desist notice?

It is a formal legal notice telling the other party that it is infringing your rights and asking it to stop within a fixed time. It also usually asks for a written undertaking, destruction of stock and withdrawal of any conflicting applications. Many disputes end at this stage.

Do I have to send a notice before filing a suit?

There is no strict legal requirement to send a notice in every case, and in urgent cases involving counterfeits, a notice may alert the infringer to hide stock. However, commercial suits without urgent relief must first go through pre-institution mediation. We advise on the right approach for your facts.

What remedies can a court give?

A court can grant an interim and permanent injunction, damages or an account of profits, an order for delivery up and destruction of infringing goods and labels, and legal costs. In suitable cases, it can appoint a local commissioner to seize infringing goods.

How does a court decide whether two marks are similar?

Courts compare the marks as a whole rather than splitting them into parts. They look at visual, phonetic and conceptual similarity, the nature of the goods or services, the trade channels, and the likely buyer. The question is whether an average buyer with imperfect recollection is likely to be confused.

Can I file the case in my own city?

For infringement of a registered mark, Section 134 of the Trade Marks Act allows the suit to be filed where the plaintiff resides or carries on business, subject to how the courts have interpreted this rule. For a passing off claim alone, the general rules on jurisdiction apply. We advise on the correct forum.

What is pre-institution mediation?

Under the Commercial Courts Act, 2015, a commercial suit that does not seek urgent interim relief must first be referred to mediation through the designated authority. If mediation fails, the suit can then be filed. Mediation can also lead to a binding settlement.

Can criminal action be taken against counterfeiters?

Yes. The Trade Marks Act treats applying a false trademark and selling goods with a false trademark as offences. The police can search and seize goods after obtaining the opinion of the Registrar. Criminal action is generally used for clear cases of counterfeiting.

What if I have received a notice claiming that I am infringing?

Do not ignore it. We review the notice, compare the marks, check the other party's rights and your own history of use, and advise whether to contest, negotiate or rebrand. A careful reply can often resolve the matter or reduce your exposure.

How long does an infringement case take?

A notice and settlement can be completed in a few weeks. A contested suit can take a few years, although interim orders are often obtained much earlier and many suits settle along the way.

Can I stop an online seller from using my mark?

Yes. Most online platforms have a grievance process for intellectual property complaints. A complaint supported by your registration and evidence can lead to removal of listings. Persistent or large-scale sellers may need a notice or court action as well.

What is acquiescence, and how can it affect my case?

Acquiescence means the trademark owner knowingly allowed the other party to use the mark without objecting. Under the Act, if a registered owner has knowingly allowed continuous use of a later registered mark for five years, the owner may lose the right to challenge it, unless the later mark was applied for in bad faith. This is why it is important to act promptly.

Can I recover the profits the infringer made?

A court may order damages or an account of profits, but not usually both for the same wrong. You will need evidence of the infringer's sales or your own losses. In some cases, courts have also awarded costs and additional damages for deliberate infringement.

Is registering a company name with my brand also infringement?

It can be. Using a registered trademark as part of a company or business name for similar goods or services can amount to infringement. In addition, the owner of a registered trademark can ask the authorities to direct a company to change a name that is identical or too similar to the mark, within the time allowed under company law.

Related Trademark & IP services

• Trademark Registration
• Trademark Renewal
• Trademark Watch
• USA Trademark