Trademark Infringement Action

What is Trademark Infringement Action?

Trademark infringement in India arises when a person uses a mark identical or deceptively similar to a registered trademark without authorisation, causing likelihood of confusion in the marketplace. The Trade Marks Act, 1999 provides civil and criminal remedies including injunctions, damages, and seizure of counterfeit goods. Our team helps brand owners identify infringement, issue notices, file suits, and pursue criminal action through police raids and border enforcement measures.

The Trade Marks Act, 1999 is the primary legislation governing the registration and protection of trademarks in India. A registered trademark gives the owner an exclusive right under Section 28 of the Act to use the mark in relation to the goods or services for which it is registered, and to obtain relief in respect of infringement in the manner provided by the Act. Trademark registration is valid for ten years from the date of application and is renewable indefinitely upon payment of renewal fees, providing perpetual protection to brands that are actively maintained. Trademark infringement is defined under Section 29 of the Trade Marks Act, 1999. Infringement occurs when a person not being the registered proprietor or licensed user uses in the course of trade a mark which is identical with, or deceptively similar to, the registered trademark in relation to the same goods or services, or in relation to goods or services so closely related that there exists a likelihood of confusion or deception in the mind of the public. Infringement also occurs where a mark identical to a well-known trademark is used for dissimilar goods if such use would take unfair advantage of or be detrimental to the distinctive character of the mark. The Act thus provides protection against both ordinary passing off and dilution of well-known marks. Section 135 of the Trade Marks Act, 1999 sets out the reliefs available to a registered trademark owner in infringement proceedings. The court may grant an injunction restraining further use of the infringing mark, damages or an account of profits, and an order for delivery up of infringing goods, labels, and packaging for destruction. The Act allows the plaintiff to elect between damages and accounts of profits. Indian courts, particularly the Delhi, Bombay, and Madras High Courts, have developed an extensive body of trademark jurisprudence and are experienced in granting urgent interlocutory relief in brand protection matters. Criminal enforcement under Section 103 of the Trade Marks Act, 1999 makes falsely applying a registered trademark or selling goods with a falsely applied trademark an offence punishable with imprisonment of not less than six months extendable to three years, and a fine of not less than fifty thousand rupees extendable to two lakh rupees. For repeat offences, the minimum punishment is one year and the minimum fine is one lakh rupees. Section 115 empowers a police officer not below the rank of Deputy Superintendent of Police to search and seize goods bearing counterfeit trademarks without a warrant, making criminal enforcement a powerful and rapid tool against commercial counterfeiters. The process of trademark enforcement begins with identifying the infringing activity and gathering admissible evidence. For physical goods, this involves purchasing infringed samples, collecting invoice records, and documenting the distribution chain. For online infringement, it involves preserving webpage evidence, identifying seller accounts, and mapping the supply chain. A cease and desist notice is then issued to the infringer, citing the registration details, the infringing acts, and demanding immediate cessation. Many infringement matters are resolved at the notice stage, particularly where the infringer is acting out of ignorance rather than deliberate bad faith. Where the infringer does not comply, civil proceedings are initiated before the appropriate court. Trademark infringement suits are typically filed in the District Court having jurisdiction or in the High Court where the defendant resides or carries on business. An application for an ad interim injunction is filed simultaneously and is one of the most effective tools in trademark enforcement — courts have historically been willing to grant such relief promptly where a well-established registered mark is being infringed. The Anton Piller order, an ex parte order permitting the plaintiff to enter the defendant's premises and seize evidence, has been granted in counterfeiting cases of significant commercial scale. Border enforcement is an additional remedy for trademark owners facing import of counterfeit goods. Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, registered trademark owners may record their mark with Customs authorities, who are then empowered to suspend clearance of suspected counterfeit consignments. This tool is particularly valuable for brands whose products are counterfeited and imported from jurisdictions with lower manufacturing costs. Common mistakes in trademark enforcement include failing to maintain proper watch services, delaying action after discovering infringement, and inadequate documentation of the infringing goods. The period of delay may be used by the defendant to argue acquiescence under Section 33 of the Act, which bars suit where the registered trademark owner has acquiesced for a continuous period of five years. Maintaining a diligent enforcement programme, conducting regular market surveys, and acting promptly upon discovery of infringement are essential to protecting brand equity and preventing the dilution of trademark distinctiveness.

How It Works

1. 1

   Brand Monitoring and Evidence Collection

   Identify infringing marks through market surveillance, online monitoring, and customs watch services. Purchase infringing samples, preserve digital evidence, and document the scope and commercial scale of infringement.

2. 2

   Infringement Assessment and Strategy

   Analyse the degree of similarity between the registered mark and the infringing mark, identify the applicable provisions of the Trade Marks Act, 1999, and determine whether civil action, criminal action, or both are most appropriate.

3. 3

   Cease and Desist Notice

   Issue a formal legal notice citing registration details, specific infringing activities under Section 29 of the Trade Marks Act, and demanding immediate cessation, withdrawal of infringing goods, and compensation within a fixed deadline.

4. 4

   Online Takedown and Platform Action

   File infringement reports with e-commerce platforms, social media networks, and domain registrars citing the registered trademark to secure removal of infringing listings, accounts, and domain names.

5. 5

   Civil Suit and Injunction

   File a trademark infringement suit and simultaneously apply for an ad interim injunction before the competent District Court or High Court under Section 135 of the Trade Marks Act. In counterfeiting cases, seek Anton Piller orders for evidence seizure.

6. 6

   Criminal Complaint and Customs Enforcement

   File a criminal complaint under Section 103 before the Judicial Magistrate or approach police for search and seizure under Section 115. Record the mark with Customs under IPR Enforcement Rules to intercept counterfeit imports at ports of entry.

Government Fees

Professional Fees