Trademark Infringement Action

Section 29 of the Trade Marks Act, 1999 defines infringement as the use by a person other than the registered proprietor or licensee of a mark identical with or deceptively similar to the registered trademark in the course of trade. Infringement covers use on identical or similar goods and services where there is a likelihood of confusion. For marks that are well known under Section 2(1)(zg), infringement may occur even for dissimilar goods where use takes unfair advantage of or is detrimental to the distinctive character of the mark.

Yes, trademark infringement action under Section 27 of the Trade Marks Act, 1999 is available only to the registered proprietor or registered user of the trademark. An unregistered mark cannot support an infringement suit. However, an unregistered mark may attract an action for passing off under common law, which requires proof of reputation, misrepresentation, and damage. It is common to plead both infringement and passing off in the same suit where the mark is registered, as this provides a dual basis for relief.

Infringement under the Trade Marks Act, 1999 requires a registered trademark and does not require proof of actual deception or damage — likelihood of confusion suffices. Passing off is a common law action available for both registered and unregistered marks, but requires the plaintiff to prove three elements: goodwill or reputation in the mark, a misrepresentation by the defendant that is likely to deceive the public, and resulting damage to the plaintiff's goodwill. Most trademark suits in India plead both infringement and passing off simultaneously to maximise the remedies available.

Indian courts have historically moved expeditiously in trademark infringement matters where the plaintiff can demonstrate an established registered mark, clear evidence of infringement, likelihood of confusion, and a risk of irreparable harm. In clear-cut infringement cases involving well-known brands or commercial counterfeiting, courts have granted ad interim injunctions ex parte within days of filing. In contested matters, hearings are typically scheduled within two to six weeks. The strength of the evidence, the reputation of the mark, and the scale of infringement significantly influence the speed and prospects of obtaining interim relief.

Section 103 of the Trade Marks Act, 1999 prescribes 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 falsely applying a registered trademark or selling goods with a falsely applied trademark. For repeat offences, the minimum term is one year and the minimum fine is one lakh rupees. Section 115 allows a Deputy Superintendent of Police to search and seize infringing goods without a warrant. Criminal action is particularly effective against commercial counterfeiters and is often pursued alongside civil proceedings.

Yes. Most major e-commerce platforms including Amazon, Flipkart, and Myntra operate brand protection programmes through which registered trademark owners may file infringement reports and secure removal of counterfeit listings. Additionally, platforms are classified as intermediaries under the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and are obligated to take action on valid takedown notices within seventy-two hours. Courts have also granted ex parte injunctions directing platforms to remove infringing seller accounts and listings in cases of large-scale counterfeiting.

An Anton Piller order, also known as a search order, is an ex parte civil court order authorising the plaintiff or plaintiff's representative to enter the defendant's premises, inspect and photograph infringing goods, and seize evidence without prior notice to the defendant. Indian courts have granted such orders in trademark counterfeiting cases where there is a real risk that the defendant will destroy or conceal evidence if given advance notice. The applicant must demonstrate a strong prima facie case of infringement, evidence of significant commercial damage, and a real possibility that the defendant would destroy evidence if notified.

Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, a registered trademark owner may apply to record the trademark with the Customs authorities at any port of entry in India. Once recorded, Customs officers are empowered to suspend clearance of imported goods if they have reasonable grounds to suspect the goods bear counterfeit trademarks. The trademark owner is then notified and given an opportunity to inspect the goods and confirm whether they are counterfeit. Recording with Customs is a proactive and cost-effective tool for brands whose products are counterfeited offshore and imported into India.

Section 33 of the Trade Marks Act, 1999 provides that where a registered trademark owner has, with knowledge of the use of a later-registered trademark, taken no action in respect of that use for a continuous period of five years, the owner is not entitled to seek relief in respect of that later mark unless the later mark was registered in bad faith. Acquiescence is a defence available to defendants in infringement suits where the plaintiff delayed enforcement over an extended period with knowledge of the infringing use. Prompt action upon discovering infringement is therefore essential to preserve the full range of remedies and avoid acquiescence.