Enforcing a mark: suit, injunction, and the passing-off alternative

No. Section 27(1) says that no person is entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. Section 28(1) gives the exclusive right to use the mark, and the right to relief for infringement, to the registered proprietor, and only if the registration is valid. A mark that has been applied for but not yet registered therefore supports no infringement action.

Section 27(2) leaves the other route open. Nothing in the Act affects a right of action against any person for passing off goods or services as those of another, or the remedies for it. Section 134(1)(c) confirms the forum: a passing off suit over a mark identical with or deceptively similar to the plaintiff's mark lies in the District Court whether the plaintiff's mark is registered or unregistered. The owner of an unregistered brand gets relief on proof of use and reputation in the market, since there is no certificate to rely on. That proof is documentary: dated invoices, advertising material, sales records and the first date of use. In Laxmikant V. Patel v. Chetanbhai Shah the plaintiff said he had used the name Muktajivan Colour Lab and Studio since 1982 in Ahmedabad, openly and extensively, while the trial court found use of Muktajivan at least since 1995. The Supreme Court granted him an ad-interim injunction.

The two claims also test different things. In Kaviraj Pandit Durga Dutt Sharma, decided under the Trade Marks Act, 1940, the Court held that an action for infringement is a statutory remedy tied to the registered mark, so differences in packing and get-up do not answer it. Those differences are relevant to passing off. Section 29 of the 1999 Act now carries the infringement tests.

Before any notice is sent, read section 142. A person who threatens another with an infringement action by circulars, advertisements or otherwise can be sued for a declaration that the threats are unjustifiable, an injunction against continuing them, and damages, unless the sender shows that the mark is registered and that the acts complained of are or would be an infringement. The section does not apply if the registered proprietor or a registered user commences and prosecutes with due diligence an infringement action against the person threatened. A legal practitioner or registered trade marks agent acting in a professional capacity is protected, and the suit lies in a court not inferior to a District Court.

Section 29(1) is the base case. A person who is not the registered proprietor or a permitted user uses in the course of trade a mark identical with or deceptively similar to the registered mark, for the goods or services in respect of which it is registered, in a way likely to be taken as use as a trade mark. Section 29(2) adds three combinations that infringe where the use is likely to cause confusion on the part of the public or is likely to have an association with the registered mark: an identical mark with similar goods or services, a similar mark with identical or similar goods or services, and an identical mark with identical goods or services.

Where the case falls under section 29(2)(c), identical mark and identical goods or services, the court shall presume that confusion is likely. The plaintiff does not have to bring evidence of actual confusion on those facts. A mark that is only similar, or goods that are only similar, leaves the plaintiff to prove the likelihood of confusion.

Section 29(4) reaches the use of an identical or similar mark on goods or services that are not similar, but only where the registered mark has a reputation in India and the use without due cause takes unfair advantage of, or is detrimental to, its distinctive character or repute. Section 29(5) makes it infringement to use the registered mark as a trade name, or part of one, for a business dealing in goods or services for which the mark is registered.

Section 29(6) lists what counts as use: affixing the mark to goods or packaging, offering or stocking goods under it, offering or supplying services under it, importing or exporting goods under it, and using it on business papers or in advertising. Section 29(8) makes advertising infringing where it takes unfair advantage of the mark and is contrary to honest practices, harms its distinctive character, or goes against its reputation. Section 29(9) extends infringement to the spoken use of the words in a mark. Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, below, applied several of these sub-sections together.

Section 30(1) allows use of a registered mark to identify goods or services as those of the proprietor, provided the use is in accordance with honest practices in industrial or commercial matters and does not take unfair advantage of, or harm, the distinctive character or repute of the mark. Both conditions must be met. Section 30(2) then lists uses that are not infringement, including a use that indicates the kind, quality, quantity, intended purpose, value or geographical origin of goods or services, a use on goods the proprietor or a registered user has put on the market, and use of one of two identical or nearly resembling registered marks in exercise of its own registration. Section 30(3) and (4) deal with resale: a person who lawfully acquires goods bearing the mark does not infringe by reselling them merely because the mark was later assigned or the goods were put on the market with consent, unless the proprietor has legitimate reasons to oppose further dealings, such as goods whose condition has been changed or impaired.

Three savings sit elsewhere. Section 34 protects a person who, or whose predecessor in title, has continuously used an identical or nearly resembling mark for the same goods or services from a date before the proprietor's own use or before the date of registration, whichever is earlier. Section 35 protects bona fide use of a person's own name or place of business, and a bona fide description of the character or quality of goods or services. Section 33 bars a proprietor who has acquiesced for a continuous period of five years in the use of a registered mark, being aware of it, from opposing that use, unless the later registration was not applied for in good faith.

Section 31(1) makes the original registration prima facie evidence of its validity in all legal proceedings relating to the mark, which is what the plaintiff relies on at the interim stage. The commonest counter is an attack on the plaintiff's registration. Under section 124(1), where the defendant pleads that the registration is invalid, the court stays the suit if rectification proceedings are already pending, and otherwise, if the plea is prima facie tenable, it raises an issue and adjourns for three months so the defendant can apply for rectification. If no application is made within that time or any extension the court allows, the plea is deemed abandoned. The rectification forum is the High Court, the substitution made for the Appellate Board by the Tribunals Reforms Act, 2021 with effect from 4 April 2021. Many section headings in the printed Act still read Appellate Board, but the text in force names the High Court.

A stay under section 124 does not stop interim relief. Section 124(5) preserves the court's power to make any interlocutory order during the stay, including an injunction, an order to keep accounts, the appointment of a receiver or the attachment of property.

Section 134(1) bars the institution of a suit for infringement, a suit relating to any right in a registered trade mark, or a passing off suit before any court inferior to a District Court having jurisdiction. Section 134(2) says that for the first two kinds of suit, a District Court having jurisdiction includes the District Court within whose limits the plaintiff, or any one of several plaintiffs, actually and voluntarily resides, carries on business or personally works for gain. The Explanation counts the registered proprietor and the registered user as a person.

A trade mark suit is a commercial dispute under section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. Under section 12A a suit that does not contemplate urgent interim relief cannot be instituted unless the plaintiff first exhausts pre-institution mediation, which must be completed within three months of the application, extendable by two months with the parties' consent, and the time spent is excluded for limitation. A plaint that seeks urgent interim relief is not caught by the bar.

Section 134(2) names clauses (a) and (b) only, which are infringement and rights suits, so a plaintiff who pleads passing off alone cannot rely on that sub-section for his own place of business. M/s Dhodha House v. S.K. Maingi shows the older position under the Trade and Merchandise Marks Act, 1958: jurisdiction followed section 20 of the Code of Civil Procedure, where the defendant resides or carries on business or the cause of action arises. The Madras High Court has read the first limb of section 134(2) generously. In Wipro Limited v. Oushadha Chandrika Ayurvedic India (P) Limited (O.S.A. Nos. 64 to 67 of 2008, decided 29 February 2008), a Division Bench held that "carries on business" is not confined to the principal place of business and covers a branch, and that a plaintiff suing under that sub-section needs no leave under Clause 12 of the Letters Patent even if no part of the cause of action arose in Chennai. The Supreme Court later limited that reading in Indian Performing Right Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161: a company carries on business at a subordinate office for this purpose only where the cause of action arises there, and where its principal place of business and the cause of action are at the same place the suit is filed there.

Section 135(1) lists the relief: an injunction on such terms as the court thinks fit and, at the plaintiff's option, either damages or an account of profits, with or without an order for delivery up of the infringing labels and marks for destruction or erasure. Section 135(2) adds that the injunction may include an ex parte injunction or an interlocutory order for discovery of documents, for preserving infringing goods, documents or other evidence, and for restraining the defendant from dealing with assets in a way that would defeat recovery of damages or costs. Section 135(3) removes monetary relief in some cases. The court shall not grant damages other than nominal damages, or an account of profits, where the mark is a certification or collective mark. It also withholds them from an infringer who proves he was unaware, and had no reasonable ground for believing, that the plaintiff's mark was on the register when he started using his, and who stopped forthwith on learning of the right. Passing off has a parallel rule for a defendant who was unaware that the plaintiff's mark was in use.

In Laxmikant V. Patel the Court granted an ad-interim injunction on a prima facie case, balance of convenience and irreparable injury. The Supreme Court restated the test in Pernod Ricard India Private Limited v. Karanveer Singh Chhabra, a 2025 decision that refused an injunction to the owner of BLENDERS PRIDE, IMPERIAL BLUE and SEAGRAM'S against the mark LONDON PRIDE. It listed a triable issue, likelihood of confusion, balance of convenience, irreparable harm and public interest, and said that where confusion is weak or speculative, interim relief may be declined at the threshold. It added that in passing off the court may mould relief to allow continued use that does not deceive, because passing off gives no exclusive right. A plaint should plead each limb separately, with dated proof behind it.

Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel shows how a contract interacts with the mark. The Supreme Court held, prima facie, that the use of Ramdev Masala on packaging infringed the registered mark Ramdev and amounted to passing off, that a family memorandum of understanding did not authorise the respondents to market their own goods under a deceptively similar mark, that compulsory labelling requirements gave no defence, and that delay and acquiescence did not bar the appellant. It issued directions to govern the dispute until the final hearing of the suit. In K. Rajendar v. A. Habeebur Rahman Sons (Application No. 2853 of 2008 in C.S. No. 845 of 2007, decided 16 April 2010), the Madras High Court vacated an interim injunction between two beedi makers. It found the marks phonetically different, noted that the defendant had traded since 2001 and that its registration was advertised in 2005, and found no evidence that the plaintiff's sales or goodwill had fallen. The plaintiff had sued only in 2007.

Section 102 defines falsifying a trade mark and falsely applying it, and puts the burden of proving the proprietor's assent on the accused. Section 103 punishes falsifying, falsely applying, keeping the dies or blocks for it, applying a false trade description, and causing any of these, with imprisonment of not less than six months and up to three years and a fine of not less than fifty thousand rupees and up to two lakh rupees, unless the accused proves he acted without intent to defraud. The court may go below those minimums for adequate and special reasons recorded in the judgment. Section 104 is the offence of selling, letting for hire or having for sale goods or services to which a false mark or description is applied, with the same punishment and with defences for reasonable precautions, disclosing the source on demand, or innocent conduct.

Section 105 raises the term on a second or later conviction to not less than one year and up to three years, with a fine of not less than one lakh rupees and up to two lakh rupees. The court may go below those minimums for adequate and special reason recorded in the judgment.

Search and seizure is in section 115, not section 104. The offences under sections 103, 104 and 105 are cognizable, and a police officer not below the rank of deputy superintendent of police may search and seize without warrant the goods, dies and instruments involved. Before doing so the officer must obtain the Registrar's opinion on the facts relating to the trade mark and abide by it. Seized articles go before a Judicial Magistrate of the first class or a Metropolitan Magistrate, and a person with an interest in them can apply within fifteen days of the seizure for their restoration. No court inferior to those magistrates may try an offence under the Act. Section 114 makes a company and every person in charge of its business guilty, with a defence for the person who proves the offence was without his knowledge or that he exercised all due diligence.

The Jan Vishwas (Amendment of Provisions) Act, 2023, in force from 1 August 2024, changed what a false claim of registration costs. Section 107(2) now provides a penalty of one half per cent. of total sales or turnover, as computed in the audited accounts, or five lakh rupees, whichever is less, on a person who falsely represents that a mark is registered. Sections 112A and 112B, inserted by the same Act, create the adjudication route. Under section 112A the Registrar may by order authorise an officer of the Registrar's office to be the adjudicating officer, who holds an inquiry and imposes penalty in the prescribed manner after giving a reasonable opportunity of being heard. An order can be appealed under section 112B to an officer at least one rank above the adjudicating officer within sixty days of receiving it, late appeals being admitted on sufficient cause, and the appeal is to be disposed of within sixty days of filing. Failure to comply within ninety days of the order is punishable, in addition to the penalty, with a fine of one lakh rupees or imprisonment up to one year, or both. Section 115(1) still provides that no court takes cognizance of an offence under section 107, 108 or 109 except on a written complaint by the Registrar or an officer authorised by him.

A domain name dispute has two routes. The administrative one is the complaint under the INDRP for a .in name and the UDRP for a generic top-level domain, in which the owner of a mark asks the dispute body to order the name transferred or cancelled. Both are registry policies, not sections of an Act, so read the current policy for the grounds and the time limits. The court route is the suit.

The suit rests on the same sections as any other. A person who uses the registered mark as his trade name or business name infringes under section 29(5), and offering or supplying services under the mark, or using it in advertising, is use under section 29(6). Where the claimant has no registration, section 27(2) keeps passing off available. The District Court determines the forum under section 134 and can grant the section 135 relief, including an injunction ordering the use to stop. In Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd the Supreme Court held that a domain name may have all the characteristics of a trade mark and can found an action for passing off. It granted the owner of the name Sify an interim injunction against the similar name Siffy, relying on prior use, public association of the name with the plaintiff and an overlap in services.

For imports, section 140(1) lets the proprietor or a licensee of a registered mark give written notice to the Collector of Customs to prohibit importation of goods whose import infringes under section 29(6)(c), which is importing or exporting goods under the mark. Section 11(2)(n) of the Customs Act, 1962 empowers the Central Government to prohibit imports for the protection of patents, trademarks, copyrights, designs and geographical indications. Under section 140(2) the Commissioner of Customs, on a representation and a reasonable belief that the mark is false, may require the importer to produce documents and name the consignor and the consignee in India.

The importer must comply within fourteen days or face a penalty of ten thousand rupees, a sub-section substituted by the Jan Vishwas Act with effect from 1 August 2024 and levied by the authority designated under the Customs Act. The Commissioner may pass the information to the proprietor under section 140(4). The recordal procedure is in the Intellectual Property Rights (Imported Goods) Enforcement Rules, which are subordinate legislation; read the current Rules for the forms and periods.