A trademark owner can sue an infringer — but a threat of infringement made without any real legal basis is itself wrongful. Section 142 of the Trade Marks Act lets the target of a “groundless threat” turn around and injunct it, and claim damages.
The exclusive right — and its limits
Trademark law gives an owner exclusive rights, including the right to commence and prosecute infringement proceedings. But that action must be bona fide and taken with due diligence. Infringement litigation carries high costs, and an injunction can inflict irreparable loss — lost revenue, lost reputation. So no one should be dragged to court on a baseless threat.
In practice, large, powerful companies sometimes use the threat of infringement to intimidate smaller businesses into abandoning a mark they are genuinely entitled to use. Those threats, lacking any legal basis, are groundless (or baseless) legal threats — what is often called trademark bullying. The USPTO describes it as a trademark owner using its rights “to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”
What Section 142 provides
Section 142 of the Trade Marks Act, 1999 addresses groundless threats directly. Where a person — by circulars, advertisements or otherwise — threatens another with proceedings for infringement of a registered (or allegedly registered) mark, the aggrieved party may sue and obtain:
- a declaration that the threats are unjustified;
- an injunction restraining continuance of the threats; and
- damages.
Notably, the protection reaches threats even from someone who does not claim to be the proprietor, licensee, assignee or registered user. Similar provisions appear across the Copyright, Patents, Designs and GI statutes.
One key exemption: acts done by a legal practitioner or agent on a client’s behalf, in their professional capacity, fall outside Section 142 liability.
A gap remains: the statute does not define what makes a threat “groundless.” The judiciary has filled that space case by case, extending protection against threats that are unjustifiable.
Bata India v. Vitaflex Mauch
In Bata India Ltd v. Vitaflex Mauch GmbH, Bata sued to restrain Vitaflex from making groundless threats of proceedings, and claimed damages. The core question before the Delhi High Court was whether the legal notice amounted to a threat, and whether Bata could claim an injunction and damages. The court held the threats groundless, unjustifiable and wrongful, and restrained the defendant from issuing any such threats.
The takeaways
- A threat can be a liability. Overreach with a cease-and-desist and the recipient may injunct you under Section 142.
- Have genuine grounds first — real rights in the relevant class, genuine similarity, and use where needed — before threatening proceedings.
- The practitioner exemption is narrow. It covers a lawyer/agent acting in professional capacity, not the client’s own baseless campaign.
- Send notices with caution. Whoever issues a legal notice or cease-and-desist should ensure the action stays within the rights the law actually grants.
Frequently asked questions
What is a groundless threat of trademark infringement? A threat of infringement proceedings made without proper legal basis — often to intimidate a smaller party into abandoning a mark it is entitled to use.
What remedy does Section 142 give? The aggrieved party can obtain a declaration that the threats are unjustified, an injunction restraining them, and damages.
Are lawyers liable for sending a cease-and-desist? No — Section 142 exempts acts done by a legal practitioner or agent on a client’s behalf in their professional capacity.
What did Bata v. Vitaflex decide? The Delhi High Court held Vitaflex’s threats to be groundless, unjustifiable and wrongful, and restrained it from issuing them.
Legislation referred to
- The Trade Marks Act, 1999