Trademark Infringement — Stop Copycats with Notices, Suits and Passing Off Action
Trademark infringement happens when someone uses a mark identical or deceptively similar to your registered trade mark, in the course of trade, without your permission. Section 29 of the Trade Marks Act, 1999 defines it, and passing off protects marks that are not yet registered. We collect the evidence, prepare the cease-and-desist notice and the suit papers, and work alongside your advocate until the copying stops.
What it is
A registered trade mark gives its owner the exclusive right to use it for the goods or services it is registered for. That right comes from Section 28 of the Trade Marks Act, 1999. When another trader sells their goods under your brand, that is infringement.
Section 29 lists the ways it happens. Using an identical or deceptively similar mark on the same or similar goods is the classic case. Where both the mark and the goods are identical, the court presumes confusion is likely under Section 29(3). Using your mark as part of their business or trade name is covered by Section 29(5). Even spoken use of a distinctive word can infringe under Section 29(9).
Here is the catch for copiers: the law reads “use” widely. Section 29(6) covers fixing the mark on goods or packaging, offering or stocking goods for sale, importing or exporting them, and using the mark on business papers or in advertising.
If your mark is not registered, you are not without a remedy. Section 27(2) keeps the common-law action of passing off alive, so a business with real goodwill can still stop a rival who passes off goods as theirs.
Who it applies to
Stop a copycat of your registered brand
Picture a Faridabad auto-parts maker that finds near-identical boxes carrying its brand in a Delhi wholesale market. With a registration in hand, Section 29 gives it a direct claim.
Protect a brand still awaiting registration
Think of a Ballabgarh namkeen brand that has sold under one name for years but never filed. Customers know the name, and that counts. Passing off protects goodwill built through actual trade. Filing for trademark registration at the same time strengthens your position for the future.
Answer a notice you received
Someone says your brand infringes theirs. Don’t panic. We check whether their registration is valid, whether you used your mark first, and whether your use falls within the limits in Section 30 before you reply.
Why it matters
Win back diverted sales
Every copied pack sold is a sale you did not make. Worse, a buyer stuck with a poor imitation blames your brand.
Get orders a court can enforce
Section 135 lets a court grant an injunction, damages or an account of profits, and order delivery-up of infringing labels and goods for destruction.
Keep the brand pointing to you
A mark that many traders use loosely stops pointing to one source. Acting against each copy keeps it yours.
Infringement or passing off: which applies
| Infringement | Passing off | |
|---|---|---|
| Basis | Registered trade mark, Sections 28 and 29 | Goodwill built through use; saved by Section 27(2) |
| What you must show | Your registration and the defendant’s unauthorised use of an identical or deceptively similar mark | Your goodwill, a misrepresentation by the defendant, and damage or likely damage to you |
| Goods covered | Registered goods or services, plus similar ones; dissimilar goods where your mark has a reputation in India (Section 29(4)) | Wherever the misrepresentation causes confusion |
| Court | Not below a District Court (Section 134) | Not below a District Court (Section 134) |
In practice, many suits plead both. Say a seller on an online marketplace copies both your registered word mark and your unregistered pack design. The word mark supports infringement; the pack design supports passing off. If the registration is ever challenged, the passing off claim still stands on its own.
Documents required
To prove your rights
- Registration certificate and the latest status page from IP India
- Renewal proof, if the mark is over ten years old
- Invoices showing your first use and continued sales
- Advertisements, catalogues, website and social media records
To prove the copying
- Photographs of the infringing product, label or shop board
- Bill from a test purchase of the copied goods
- Dated screenshots of online listings or websites
- Any customer complaints showing confusion
If you received a notice
- The notice and its envelope or email
- Your own trademark application or registration
- Proof of when you first adopted and used your mark
- Your company or firm incorporation papers
How it works
Check both marks on the register
We run a trademark search on the IP India portal to confirm your registration, its classes and renewal date, and whether the other side has filed or registered anything.
Build the evidence file
We arrange test purchases, dated screenshots and a clear side-by-side comparison of the marks, packaging and trade channels.
Send a cease-and-desist notice
We draft the notice for your review. A practising advocate signs and sends it, as with any legal notice. It demands that use stop, stock be withdrawn and an undertaking be given.
Settle, or go to court
Many cases end right here, with a written undertaking or a settlement. If not, your advocate files the suit, usually with an application for an interim injunction, and we prepare the documents and evidence.
Watch the register afterwards
Copiers often try to register a variant. We watch the Trade Marks Journal and file trademark oppositions where needed.
Timelines
Mediation before a suit
Trademark disputes are commercial disputes under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. A suit that does not seek urgent interim relief needs pre-institution mediation under Section 12A first.
Three months to challenge validity
If a defendant pleads that your registration is invalid, the court can adjourn the case for three months from framing the issue so a rectification application can be filed (Section 124).
Fifteen days after a police seizure
Anyone with an interest in goods seized by the police can apply to the Magistrate for their return within fifteen days of the seizure (Section 115).
What happens if the copying goes on
Civil liability
Under Section 135, the court can restrain the infringer, award damages or an account of profits, and order delivery-up of infringing labels and marks.
Criminal penalty
Applying a false trade mark is punishable under Section 103 with imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh. The offence is cognizable under Section 115.
Smaller damages if you stay silent
Section 135(3) bars more than nominal damages where the infringer did not know of your registration and stopped once aware. A notice puts them on record.
Frequently asked questions
What counts as trademark infringement in India?
Trademark infringement is the unauthorised use, in the course of trade, of a mark identical with or deceptively similar to a registered trade mark. Section 29 of the Trade Marks Act, 1999 covers use on the same or similar goods, use on dissimilar goods where your mark has a reputation in India, and use as a trade name. Where the mark and goods are both identical, the court presumes confusion. A side-by-side comparison of the two marks shows us how strong your case is.
Can I take action if my trademark is not registered?
Yes, through a passing off action. Section 27(2) preserves the right to sue for passing off, and Section 134 says the suit cannot be filed in any court below a District Court. You need to show goodwill, misrepresentation by the other trader, and damage or likely damage. Invoices and advertisements from your early years carry real weight here, and filing your own registration alongside protects you going forward.
Where is a trademark infringement suit filed?
It is filed in a court not inferior to a District Court. For infringement of a registered mark, Section 134(2) lets the proprietor sue where it actually and voluntarily resides, carries on business or personally works for gain, so a Faridabad business can usually sue at home. Trademark disputes are commercial disputes, so suits of a specified value of ₹3 lakh or more go to a commercial court. Your advocate confirms the exact forum before filing.
Is mediation compulsory before a trademark suit?
Only if you are not asking for urgent interim relief. Section 12A of the Commercial Courts Act, 2015 requires pre-institution mediation for suits that do not contemplate urgent interim relief. Most infringement suits do seek an urgent interim injunction to stop sales quickly, and those can be filed straight away. Where talks look possible, mediation can settle the matter at lower cost.
Do I have to send a cease-and-desist notice before suing?
No law makes the notice compulsory, but it often helps. Under Section 135(3), a court cannot award more than nominal damages where the infringer did not know of your registration and stopped once aware. A notice puts the infringer on record. In urgent cases, such as counterfeit goods about to reach the market, your advocate may go straight to court without warning. We help you choose the right order.
Can trademark infringement lead to a criminal case?
Yes. Applying a false trade mark is punishable under Section 103 with imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh. Under Section 115, the offence is cognizable, and a police officer not below the rank of Deputy Superintendent can search and seize goods without a warrant after obtaining the Registrar’s opinion on the facts. Criminal complaints suit clear counterfeiting cases best.
What if someone uses my mark on completely different goods?
You may still have a claim under Section 29(4) if your mark has a reputation in India. The use must be without due cause and take unfair advantage of, or harm, the distinctive character or repute of your mark. This protection is narrower than ordinary infringement, so you need proof of reputation, such as sales and advertising records. We tell you plainly how strong that proof is before any notice goes out.
What should I do if I receive an infringement notice?
Do not ignore it, and do not reply in haste. Check whether their mark is registered and for which goods, and whether you used your mark first, because Section 34 protects a prior user. If their registration looks invalid, a rectification application can follow; once a court frames that issue, Section 124 gives three months to file it. We review the papers and prepare a reply for your advocate to send.
Can a licensee sue for infringement?
A registered user can. Section 52 lets a registered user sue for infringement in its own name, subject to its agreement, making the registered proprietor a defendant. The proprietor pays no costs unless it appears and takes part. A licensee that has not been recorded as a registered user has no such right under Section 53, so the proprietor must bring the case. Recording the licence fixes this.
What it costs
Our fee plus the government fee that applies to your case, quoted before you commit. Tell us the situation and we will price it exactly.
A notice carries no government fee. A suit carries court fee under the state’s court-fee law, worked out on how the claim is valued, and the advocate’s fee is agreed separately with the advocate.
Ready to begin?
Send us photos of the copy and your registration details, and we will tell you what the strongest next step is.