Trademark Litigation In India

Posted On - 4 August, 2023 • By - King Stubb & Kasiva

In today’s world, intellectual property is a valuable asset for individuals and companies. One essential form of intellectual property is a trademark. A trademark can be a word, symbol, or design that sets a product or service apart from others in the market.

When someone uses a trademark without permission, it can harm its value and reputation. To protect their rights, trademark owners can send a legal notice to the offender, asking them to stop the unauthorized use. If the infringement continues, trademark litigation may be necessary.

In India, trademark holders can file a lawsuit against the infringing party. The law also allows for criminal penalties for offenses like applying a false trademark or selling goods with a fake trademark. This article will explore the nuances of trademark litigation, protecting against unjustified threats, registered trademarks and passing off, and also explaining the rights, remedies, and jurisdiction available to trademark owners.

Protecting Against Unjustified Threats

Indian law also protects businesses from groundless threats of legal proceedings. For instance, under Section 142 of the Trade Marks Act, if someone threatens legal action for trademark infringement, the threatened party has the option to file a civil suit seeking a declaration that such threats are unlawful.[1] They can also request an injunction against the continuation of such threats and claim damages if they have suffered any loss. However, this provision does not apply once legal proceedings resulting from the threats are instituted.

Similar provisions are present in the Copyright Act,[2] the Patents Act,[3] and the Designs Act,[4] but the latter two do not explicitly mention the cessation of proceedings due to groundless threats once legal action has been taken.

Unregistered Trademarks and Passing-Off

The concept of passing off in India is a common law right, protecting the goodwill and reputation of a person’s trademark and preventing dishonest use by others. Passing off does not require a registered trademark and is based on principles of natural justice. It aims to address violations related to unregistered trademarks. Typically, plaintiffs file composite suits for both infringement and passing off, as challenges to trademarks often occur during infringement suits.

Principles of Passing Off in India:

  • First Adoption: The first user of a trademark may be protected against subsequent users.[5]
  • Honest and Bonafide Use: Users who adopted the mark honestly and in good faith can seek protection.
  • Long, Continuous, and Uninterrupted User: Protection can be sought if the trademark has been used consistently and without interruption.

The aggrieved party needs to establish the presence of the following elements to claim passing off:

  • Reputation and Goodwill: The aggrieved party must prove that their mark has acquired a reputation and goodwill in the market.
  • Misrepresentation: The defendant must have used a mark that causes confusion among the public, leading them to believe it is associated with the plaintiff’s mark.[6]
  • Damage: The aggrieved party must demonstrate that they have suffered damage due to the defendant’s actions.[7]

Jurisdiction in Trademark Litigation Matters

In cases of trademark infringement and passing off suits, determining the appropriate jurisdiction is crucial. There are three major factors considered when deciding jurisdiction:

  • Territorial Jurisdiction: The provision as provided under the Trademarks Act, 1999, a suit for infringement can be filed before any District/High Court having Ordinary Original Civil Jurisdiction.[8] For passing off suits, jurisdiction lies with any court that is not below a District Court.
  • Pecuniary Jurisdiction: The pecuniary value of the suit also plays a role in determining the appropriate court. Generally, suits with higher monetary claims are filed in higher courts, while smaller claims are filed in lower courts.
  • Subject Matter Jurisdiction: It relates to whether a particular court has the authority to hear and decide on a specific type of case. Trademark infringement and passing off matters fall under the purview of civil courts.

Defenses in Infringement or Passing Off Actions:

Defenses available in infringement or passing off actions include:

  • Delay and Laches: Delay in initiating legal action does not automatically disqualify the aggrieved party from obtaining relief. However, if the delay has caused prejudice to the defendant, the court may consider it while deciding on an injunction.
  • Acquiescence: Acquiescence implies a course of conduct inconsistent with claiming exclusive rights to a trademark. If a trademark owner does not contest the validity or use of a subsequent trademark for a continuous period of five years, they may lose the right to challenge it.
  • Honest and Bonafide Adoption and Use: A defendant may claim honest and good faith adoption and use of their trademark.
  • Concept of Allied and Cognate Goods, Trade Channel, Counter of Sale: In India, trademarks for similar or deceptively similar products cannot be used if the goods fall under allied or cognate categories.[9] Factors like nature and composition of goods, their respective uses, and trade channels used for selling them are considered to determine if they are goods of the same description.
  • Absence of Confusion or Deception: If the defendant can demonstrate that there is no likelihood of confusion or deception among consumers, this may serve as a defense.

Penalties and Reliefs in Trademark Infringement Cases:

Trademark infringement cases in India provide various penalties and reliefs to the aggrieved party. Previously, only temporary or permanent injunctions, damages, costs of litigation, accounts of profits, and the destruction of infringing goods were available for infringement and passing off cases. However, the legal landscape has evolved, and additional remedies are now provided to protect trademark rights.

  • Injunctions: Courts can grant temporary or permanent injunctions, restraining the infringer from further using the infringing mark.
  • Damages: The court may award monetary compensation to the aggrieved party for the losses suffered due to the infringement.
  • Accounts of Profits: The court can order the infringer to account for the profits derived from the unauthorized use of the trademark.
  • Cost of Litigation: The prevailing party may be awarded the costs incurred during the legal proceedings.
  • Anton Piller Injunction: This allows the plaintiff to conduct a surprise search and seizure at the infringer’s premises to gather evidence and preserve relevant materials.[10]
  • Mareva Injunction: This freezes the infringer’s assets or products to prevent them from dissipating or removing them from the jurisdiction.
  • John Doe Orders: These are issued in cases where the identity of the infringer is not known, allowing the plaintiff to take action against unidentified parties involved in the infringement.
  • Punitive Damages: In certain cases of deliberate and malicious infringement, the court may award punitive damages to deter future infringements.[11]
  • Customs Protection: Trademark owners can register their rights with the Customs Department to prevent the import of counterfeit goods.


In conclusion, trademark litigation in India plays a pivotal role in protecting the rights and interests of trademark owners. With a robust legal framework in place, trademarks are safeguarded against infringement and passing off. Trademark holders can take legal action to enforce their exclusive rights, seek remedies, and deter potential violators from causing harm to their brand reputation and goodwill.

The jurisdictional aspect is a critical consideration in trademark litigation, determining the appropriate court where the lawsuit should be filed. Factors like the place of business, cause of action, and defendant’s location are all instrumental in determining the jurisdiction.

Overall, trademark litigation in India offers a robust legal framework to safeguard intellectual property rights and foster a competitive and fair business environment. Businesses and individuals alike should be proactive in protecting their trademarks, both through registration and by enforcing common law rights through passing off actions.


What are the steps to protect trademark rights in India?

To safeguard trademark rights in India, one must ensure continuous and honest use of the mark in the market. Legal protection can be sought under the Trade Marks Act, offering statutory rights and remedies against infringement.

Can legal action be taken against someone using a similar mark?

Yes, legal action can be pursued for trademark infringement if an unauthorized person uses a mark identical or deceptively similar to the registered mark. Such use may cause confusion among consumers, and a civil lawsuit can protect the owner’s rights.

What remedies are available in trademark infringement cases in India?

In trademark infringement cases, the following remedies are available: injunctions to restrain the infringing use, damages to compensate for losses, accounts of profits to recover the infringer’s gains, costs of litigation, and punitive damages in certain cases of deliberate and malicious infringement. Additionally, trademark owners can seek Anton Piller and Mareva injunctions for evidence preservation and asset freezing, respectively.

[1] The Trade Marks Act, [Act No. 47 of 1999], Section 142

[2] The Copyright Act, 1957 [Act 14 of 1957]

[3] The Patents Act of 1970 [Act 39 of 1970]

[4] The Designs Act, 2000 [Act no. 16 of 2000]

[5] Milmet Oftho Industries and Ors Vs. Allergan Inc. 2004 (12) SCC 624

[6] Cadila Health Care Ltd. vs.Cadila Pharmaceuticals Ltd. [Appeal (civil) 2372 of 2001]

[7] Beiersdorf A.G. v. Ajay Sukhwani and Anr. 156 (2009) DLT83

[8] The Trade Marks Act, [Act No. 47 of 1999], Section 134

[9] H.M. Saraiya Ors. Vs. Ajanta India Ltd. and Anr 1994 (1) SCR 708

[10] Louis Vuitton Malletier v. Aggarwal (CS (OS) 2296/2011)

[11] Cartier International AG v. Gaurav Bhatia (226(2016) DLT662)

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