An infringement suit is the statutory remedy for enforcing a registered trademark.
In India, infringement occurs where a person who is not the registered proprietor or a licensee uses a mark identical or deceptively similar to a registered trademark, in relation to the goods or services for which the mark is registered.
Sections 29 and 30 of the Trade Marks Act, 1999 deal with infringement and with the limits on the proprietor’s rights.
Infringement or passing off?
Both remedies address unauthorised use of a mark, and most Indian suits plead both. They are not the same thing.
| Infringement | Passing off | |
|---|---|---|
| Source | Statutory, under the Trade Marks Act | Common law tort, not defined in the Act |
| Registration | Required | Not required |
| What you prove | The impugned mark is a colourable imitation of the registered mark | The Classical Trinity: goodwill, misrepresentation, damage |
| Deception | Not a significant element | Central to the claim |
| Burden | Lighter | Heavier |
The practical difference is the burden. An infringement claim succeeds where the claimant shows the impugned mark is a colourable imitation of the registered mark. A passing off claimant must establish reputation, misrepresentation and damage, which is a considerably harder evidentiary task.
Neither is superior in the abstract. Registration is what makes the easier route available, which is the strongest practical argument for registering.
Jurisdiction
Section 134 of the Trade Marks Act provides where an infringement suit can be filed.
A suit can be instituted before a District Court within whose jurisdiction the person instituting the suit actually and voluntarily resides, carries on business, or personally works for gain at the time the suit is instituted. Where there are several claimants, any one of them qualifies.
This is a meaningful advantage. For infringement the claimant can sue at their own place of business. For passing off, the ordinary rules apply and that convenience is not available, which affects where a combined suit can properly be filed.
The scope of “carries on business” has been litigated extensively, and it is worth taking a view on it before filing rather than after a jurisdictional objection.
Remedies
The Act provides both civil and criminal remedies. Trademark infringement is a cognizable offence, and criminal proceedings can be initiated against an infringer.
Civil remedies
Injunction. A perpetual injunction is generally granted on the merits when the suit is finally decreed. A temporary injunction may be granted at any stage, for a stipulated period or until further order.
The temporary injunction is the critical stage. Without it, the defendant can continue using the mark throughout the litigation, which defeats much of the purpose of suing. In practice, the interim application is where Indian trademark disputes are effectively decided.
Damages or account of profits. The claimant elects between them.
Delivery up, destruction or erasure of infringing goods and materials.
Criminal remedies
Criminal proceedings are available alongside civil action, and in counterfeiting matters they are often the more effective lever because they enable search and seizure.
See also anti-counterfeiting actions and customs recordal for border enforcement.
A caution on demand letters
Indian law provides a remedy for groundless threats of infringement proceedings. A person threatened with an unjustified infringement action can sue the person making the threat.
This means a cease and desist letter carries risk where the underlying position is weak. It is worth being confident of the registration and the infringement analysis before sending one.
Where both parties are registered
Where the defendant also holds a registration for the mark they are using, the position changes. The Kerala High Court has held that an infringement action is not available against a registered proprietor, though passing off remains open.
In that situation, the route is usually rectification against the defendant’s registration, run alongside a passing off claim.
Frequently asked questions
Can I sue for infringement without a registration? No. Infringement is a statutory remedy tied to registration. Without one, the route is passing off, which requires proof of reputation.
Where do I file the suit? Under Section 134 you can file where you reside or carry on business, before a court not inferior to a District Court. This is more convenient than the ordinary rules that apply to passing off.
How quickly can I get an injunction? Interim relief can be sought at the outset, and in urgent cases ex parte orders are available. Speed depends on the court and the strength of the papers, so the initial filing needs to be thorough.
Is trademark infringement a criminal offence in India? Yes, it is a cognizable offence, and criminal proceedings can run alongside civil action.
Do I have to choose between damages and account of profits? Yes, the claimant elects between them rather than recovering both.
Should I send a cease and desist letter first? Often, but carefully. Groundless threats are actionable, and a letter also alerts the defendant, which can matter if you are considering an ex parte application.
Useful official resources
- Trade Marks Act, 1999 — Sections 29, 30, 134
- IP India public search — to verify registration status of both marks
- Delhi High Court Intellectual Property Division — rules of procedure for IP matters
Dealing with an infringer, or on the receiving end of a notice? Talk to us. The first response shapes the whole matter.