All counterfeits infringe a trademark — but not all infringements are counterfeits. The two are often used interchangeably; the legal difference decides which remedies you can reach.
The definitions
- Trademark infringement — under Section 29 of the Trade Marks Act, 1999, the unauthorised use of an identical or deceptively similar mark. It is the broader concept.
- Counterfeiting — a fraudulent or exact imitation intended to deceive or defraud, so the fake is practically indistinguishable from the genuine article. Notably, the Trade Marks Act does not formally define “counterfeiting.”
The neat summary: “All infringements are not counterfeits, though all counterfeits are infringements.” Infringement covers confusingly/deceptively similar marks; counterfeiting is the exact fake at the extreme end of that spectrum.
Why the distinction matters: remedies
The two attract different remedies:
- Infringement is pursued through civil remedies — injunction and damages/accounts.
- Counterfeiting can also be a cognizable criminal offence (under the penal law), opening the door to police action, search and seizure, alongside civil relief.
So classifying conduct as counterfeiting — not merely infringement — can unlock criminal enforcement.
The Montblanc example
The Delhi High Court considered these ideas in a Montblanc matter: defendants ran an e-commerce site (digaaz.com) selling counterfeit Montblanc writing instruments at steep discounts, imitating the “Star Device” mark. Montblanc sought a permanent injunction and damages (~₹20 lakh). The court granted the injunction but declined damages for want of evidence of actual harm — a familiar reminder that quantified proof of loss is essential to recover money.
Practical guidance
- Characterise the conduct correctly. Exact fakes may support criminal action, not just a civil suit.
- Preserve evidence of loss. Injunctions are readily granted; damages require documented harm.
- Move on the supply chain. For counterfeits, search-and-seizure and action against sellers/platforms can be more effective than a single suit.
Frequently asked questions
What is the difference between infringement and counterfeiting? Infringement is unauthorised use of an identical or deceptively similar mark (Section 29); counterfeiting is an exact, fraudulent imitation. All counterfeits infringe, but not all infringements are counterfeits.
Are the remedies different? Yes. Infringement is pursued civilly (injunction, damages); counterfeiting can also be a criminal offence, enabling police action and seizure.
Does the Trade Marks Act define counterfeiting? No. The Act does not formally define counterfeiting, though it is addressed as a criminal offence under penal law.
Why were damages refused in the Montblanc case? Because there was insufficient evidence of actual harm — an injunction was granted, but damages require documented loss.
Legislation referred to
- The Trade Marks Act, 1999