Trademark Infringement and Passing Off in India: Understanding Your Remedies
A brand is often a business's most valuable asset. When it is copied or misused, swift legal action — including emergency injunctions — can protect it. But knowing which remedy applies, and why, is the starting point.
What is trademark infringement?
Trademark infringement is a statutory remedy under the Trade Marks Act 1999. A registered trademark owner has the exclusive right to use the mark in relation to the goods or services for which it is registered. Infringement occurs when a person uses, without the owner's consent, a mark that is:
- Identical to the registered mark for identical goods/services, or
- Similar to the registered mark for identical or similar goods/services, where there is a likelihood of confusion on the part of the public, or
- Identical or similar to a well-known mark, even for dissimilar goods, where the use takes unfair advantage of, or is detrimental to, the mark's distinctive character or reputation.
Crucially, infringement requires that the trademark be registered. If the mark is not registered, the infringement remedy is not available — but the passing off action is.
What is passing off?
Passing off is a common law remedy that protects unregistered trademarks (and other signs, get-up or trade dress). It does not require registration. The classic elements are the "classical trinity" established by the English courts and followed in India:
- Goodwill — the claimant's mark has acquired goodwill and reputation in the relevant market;
- Misrepresentation — the defendant has made a misrepresentation (intentionally or otherwise) that its goods or services are those of, or associated with, the claimant;
- Damage — the misrepresentation has caused, or is likely to cause, damage to the claimant's goodwill.
Even where a mark is registered, a passing off action can be brought alongside an infringement claim, which is common in practice.
What remedies are available?
Indian courts grant a range of remedies in trademark disputes:
- Injunction (temporary and permanent) — the most important remedy; restrains the defendant from continuing to use the infringing mark. An ad-interim ex-parte injunction can be granted urgently without notice to the defendant in appropriate cases;
- Damages — compensation for loss suffered;
- Account of profits — requiring the defendant to account for the profits it made from the infringement, as an alternative to damages;
- Delivery up and destruction of infringing goods and materials;
- Criminal prosecution — the Trade Marks Act 1999 also provides for criminal offences for applying a false trademark and related acts.
How does litigation proceed in practice?
A trademark dispute typically begins with a cease and desist letter, which may itself prompt a settlement. If not, a suit is filed before the appropriate court (the High Court or a commercial court, depending on the value and nature of the claim). The key steps are:
- Filing of the plaint with an application for ad-interim injunction;
- If the court is satisfied, it may pass an ex-parte order, with the defendant given an opportunity to be heard thereafter;
- Pleadings, discovery and trial in the usual way;
- Final decree and remedies.
Many disputes settle after the grant of interim injunction, once the infringing activity is stopped and the commercial harm is contained.
How can businesses protect their trademarks?
Prevention is more effective than litigation:
- Register the trademark before launch — registration gives statutory rights and makes enforcement simpler;
- Monitor the market and the Trade Marks Registry for conflicting applications;
- Act quickly — delay in enforcement can be held against the claimant (acquiescence), and the longer infringement continues, the greater the harm;
- Document evidence of goodwill and reputation, especially for unregistered marks;
- Consider customs recordal to intercept counterfeit goods at the border.
Frequently Asked Questions