What is Trademark Infringement?
Trademark infringement occurs when a person uses a trademark that is identical or deceptively similar to a registered trademark, in relation to goods or services for which the trademark is registered, without the authorization of the trademark owner. This unauthorized use creates confusion among consumers regarding the origin of goods or services.
Under Section 29 of the Trade Marks Act, 1999, infringement is defined as use of a mark that is identical with or deceptively similar to the registered trademark, in the course of trade, in relation to goods or services in respect of which the trademark is registered, which is likely to cause confusion on the part of the public or which is likely to be taken as being use as a trademark.
Essential Elements of Infringement
- • The plaintiff must have a valid trademark registration
- • The defendant must have used the mark in the course of trade
- • The use must be in relation to goods/services covered by registration
- • The mark used must be identical or deceptively similar
- • Such use is likely to cause confusion among consumers
Types of Infringement
Trademark infringement can take various forms depending on the nature of unauthorized use and the similarity between the marks.
Direct Infringement
Identical Mark, Identical Goods
Use of a mark identical to the registered trademark for identical goods or services. This is the clearest case of infringement where confusion is presumed.
Similar Mark, Identical/Similar Goods
Use of a deceptively similar mark for identical or similar goods/services where there exists a likelihood of confusion. The test is visual, phonetic, and conceptual similarity.
Identical/Similar Mark, Dissimilar Goods
Use of identical or similar marks for dissimilar goods where the registered mark has a reputation in India, and such use takes unfair advantage of or is detrimental to the distinctive character/repute of the trademark.
Indirect Infringement
- Contributory Infringement: Knowingly enabling or assisting another to infringe
- Vicarious Liability: Employers held liable for infringement by employees in course of employment
- Innocent Infringement: Infringement without knowledge (may reduce damages but does not eliminate liability)
Online Infringement
- Domain Name Squatting: Registering domain names identical or similar to trademarks
- Meta Tag Misuse: Using trademarked terms in website meta tags to divert traffic
- Keyword Advertising: Bidding on trademarked keywords in search engine advertising
- Social Media Impersonation: Creating fake profiles using brand names
- E-commerce Counterfeiting: Selling counterfeit goods on online marketplaces
Legal Framework
Trademark infringement in India is governed by a comprehensive legal framework including statutory law, common law principles, and international treaties.
Statutory Law
- • Trade Marks Act, 1999 (Sections 29, 30, 134, 135)
- • Trade Marks Rules, 2017
- • Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
- • Consumer Protection Act, 2019
Common Law
- • Passing off action
- • Misrepresentation and unfair competition
- • Dilution of goodwill
- • Tort of deceit
International Framework
- • Paris Convention for Protection of Industrial Property
- • TRIPS Agreement (Agreement on Trade-Related Aspects of IP Rights)
- • Madrid Protocol for International Registration
- • Singapore Treaty on the Law of Trademarks
Civil Remedies
Civil remedies for trademark infringement are primarily obtained through suits filed in District Courts or High Courts (depending on pecuniary jurisdiction). The Trade Marks Act provides comprehensive civil remedies to rights holders.
1. Injunction
The most common and effective remedy, an injunction orders the infringer to stop using the trademark. Types include:
- • Interim/Temporary Injunction: Granted during pendency of suit to prevent ongoing harm
- • Permanent Injunction: Granted at final judgment, permanently restraining infringement
- • Mareva Injunction: Freezes infringer's assets to prevent dissipation
- • Anton Piller Order: Allows seizure of infringing goods and evidence
2. Damages
Compensation for losses suffered due to infringement:
- • Actual Damages: Proven financial loss suffered by plaintiff
- • Statutory Damages: Presumed damages where actual loss difficult to prove
- • Exemplary/Punitive Damages: Awarded for willful infringement to deter future violations
- • Nominal Damages: Token amount where infringement proved but no substantial loss
3. Accounts of Profits
The infringer must account for and surrender profits earned through infringement. This is an equitable remedy awarded at court's discretion when damages are inadequate.
4. Delivery Up and Destruction
Court may order delivery of infringing goods, labels, and packaging materials for destruction. This prevents re-entry of infringing goods into the market.
5. Rectification and Cancellation
In case of conflicting registrations, the rights holder can file for rectification to remove or amend the infringing mark from the register.
Jurisdiction and Court Fees
| Court | Pecuniary Jurisdiction | Typical Timeline |
|---|---|---|
| District Court | Up to ₹2 crores (varies by state) | 2-5 years |
| High Court | Above district court limits | 1-3 years |
| Commercial Court | Dedicated IP benches in some cities | 1-2 years |
Criminal Remedies
The Trade Marks Act provides for criminal prosecution of trademark infringement, particularly for counterfeiting and fraudulent use of trademarks. Criminal remedies act as a strong deterrent against willful infringement.
Criminal Offenses under Trade Marks Act
| Offense | Section | Punishment |
|---|---|---|
| Falsifying/False application of trademark | Section 103 | 6 months - 3 years imprisonment + ₹50,000 - ₹2,00,000 fine |
| Selling goods with false trademark | Section 104 | 6 months - 3 years imprisonment + ₹50,000 - ₹2,00,000 fine |
| Falsely representing trademark as registered | Section 107 | Up to 3 years imprisonment + fine |
| Improper use of indication of origin | Section 108 | Up to 3 years imprisonment + fine |
Criminal Procedure
- Filing Complaint: File complaint before Metropolitan Magistrate or Judicial Magistrate
- Cognizable Offense: Police can arrest without warrant for trademark offenses
- Search and Seizure: Police/Customs can conduct raids and seize counterfeit goods
- Summary Trial: Cases may be tried summarily for faster disposal
- Cognizance: Court takes cognizance on police report or private complaint
Civil vs Criminal Action
Civil remedies focus on compensation and stopping infringement (injunction), while criminal remedies focus on punishment (imprisonment/fines). Both can be pursued simultaneously. Criminal action provides immediate relief through police raids and is particularly effective against counterfeiters.
Passing Off Action
Passing off is a common law tort that protects unregistered trademarks based on the principle that "nobody has any right to represent his goods as the goods of somebody else." It is codified in Section 27(2) of the Trade Marks Act, 1999.
Elements of Passing Off
The classical trinity of passing off requires proof of:
- 1. Goodwill/Reputation: The plaintiff must establish goodwill or reputation in the mark among consumers
- 2. Misrepresentation: The defendant has made a misrepresentation leading or likely to lead the public to believe goods/services are those of the plaintiff
- 3. Damage: The plaintiff has suffered or is likely to suffer damage to goodwill or reputation
Types of Passing Off
Traditional Passing Off
Defendant sells his goods as plaintiff's goods (direct misrepresentation)
Extended Passing Off
Defendant's misrepresentation damages plaintiff's goodwill (e.g., false claims about product origin)
Inverse Passing Off
Defendant sells plaintiff's goods as his own (removing plaintiff's mark)
Passing Off vs Infringement
| Aspect | Passing Off | Infringement |
|---|---|---|
| Registration Required | No | Yes |
| Burden of Proof | Higher - must prove goodwill and misrepresentation | Lower - registration creates presumption of validity |
| Geographic Scope | Limited to area of actual goodwill | Throughout India (registration covers entire country) |
| Criminal Remedies | Not available | Available under Trade Marks Act |
Gathering Evidence
Strong evidence is crucial for successful trademark infringement litigation. Proper documentation from the beginning strengthens the case significantly.
Evidence of Trademark Rights
- • Trademark registration certificate
- • Application filing receipts and prosecution history
- • Renewal certificates
- • Assignment/ license agreements (if applicable)
- • International registrations (Madrid Protocol)
Evidence of Use and Goodwill
- • Sales figures and market share data
- • Invoices and purchase orders
- • Advertising expenditure and promotional materials
- • Media coverage and awards
- • Social media presence and engagement
- • Survey evidence showing brand recognition
- • Consumer testimonials and affidavits
Evidence of Infringement
- • Infringing products, labels, and packaging
- • Purchase receipts from infringing sellers
- • Website screenshots and social media posts
- • Domain name registration records
- • Evidence of customer confusion (complaints, enquiries)
- • Private investigator reports (if applicable)
Enforcement Strategies
Effective trademark enforcement requires a multi-pronged approach combining legal, administrative, and commercial strategies.
Pre-Litigation Strategies
- • Cease and Desist Notice: Formal notice demanding cessation of infringement
- • Negotiation: Settlement discussions for coexistence or assignment
- • Mediation: Alternative dispute resolution to avoid litigation costs
- • Online Enforcement: Takedown notices to e-commerce platforms, social media
Border Enforcement
Record trademark with Customs authorities under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007:
- • File Form C with Customs Commissioner
- • Provide security/bond for potential claims
- • Customs will seize suspected counterfeit imports
- • Right holder notified to take legal action within specified period
Online Enforcement
- • Domain Disputes: File UDRP or INDRP complaints for cybersquatting
- • E-commerce: Report counterfeit listings on Amazon, Flipkart, etc.
- • Social Media: Report impersonation accounts and infringing content
- • Search Engines: Report trademark violations in ad programs