Trademark Infringement and Passing Off: Remedies in India

Lata Joshi runs Lata Foods, a small Pune snack brand she built over eight years. One morning a customer asked why her bhakarwadi now tasted different, and she discovered a rival selling near identical packets under a deceptively similar name in the same shops. She had a registered trademark, but did not know that the law gives her two separate weapons to stop the copycat and recover her losses. This guide explains both.

These are two different actions, and knowing which one fits your situation decides where and how you sue.

Infringement is the statutory remedy. It is available only to the owner of a registered trademark. Under Section 29 of the Trade Marks Act 1999, a person infringes your mark when they use, without permission, a mark that is identical with or deceptively similar to your registered mark on the same or similar goods or services, in a way that is likely to cause confusion or an association in the public mind. Section 29 also covers dilution of a well known mark even on different goods, and misuse of your mark as a trade name or business name. Because the mark is on the register, you do not have to prove your reputation from scratch. The registration itself is your evidence of the right.

Passing off is the older common law remedy. It protects the goodwill attached to a mark, registered or not. Section 27(2) of the Act expressly saves this right. It says nothing in the Act affects the right to sue any person for passing off goods or services as those of another, or the remedies for it. So even a trader who never registered a mark can stop a rival who rides on their reputation, and a registered owner can plead passing off in addition to infringement in the same suit.

This article deals only with enforcement, that is, what to do when someone copies your mark. If you have not yet applied to register a mark, that is a separate process handled at the Trade Marks Registry and is outside the scope of this guide.

To win a passing off action you must prove three things, a test Indian courts call the classical trinity. It comes from the English House of Lords decision in Reckitt and Colman Products Ltd v Borden Inc 1990, the famous Jif Lemon case, and the Supreme Court of India has applied the same approach in cases such as Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd.

1. Goodwill or reputation. You must show that the get up, name or mark you use has come to be recognised by the buying public as distinctive of your goods or services.
2. Misrepresentation. The defendant must have made a misrepresentation, deliberate or not, that leads or is likely to lead the public to believe their goods are yours.
3. Damage, or likelihood of damage. You must show that the misrepresentation has caused, or is likely to cause, harm to your goodwill or business.

If even one limb fails, the passing off claim fails. This is why traders are urged to keep dated evidence of sales, advertising and reputation from the very start.

Section 135 of the Trade Marks Act 1999 lists the civil reliefs a court can grant in a suit for infringement or for passing off:

• Injunction. A temporary (interim) injunction can stop the infringer immediately while the case runs, and a permanent injunction at the end. This is usually the most valuable relief for a brand owner.
• Damages or account of profits. You choose between compensation for your loss (damages) or handing over the profit the infringer made (account of profits). You cannot get both for the same act.
• Delivery up and destruction. The court can order the infringing labels, packaging and goods to be delivered up to you or destroyed so they never reach the market.

In urgent cases courts also pass ex parte orders without first hearing the other side, and John Doe or Ashok Kumar orders against unknown or unnamed infringers, often used against counterfeit networks. These are discretionary and granted only on a strong, well documented case.

Section 134 of the Trade Marks Act 1999 says no suit for infringement of a registered trademark, or for passing off, can be filed in any court below a District Court. Importantly, it adds a special rule in your favour. You may sue in the District Court where you, the plaintiff, actually and voluntarily reside or carry on business or work for gain, not only where the defendant operates. This is in addition to the ordinary rule under the Code of Civil Procedure, and it makes life much easier for a small business owner who would otherwise have to chase the infringer across the country.

Sometimes the problem is that the copycat has actually managed to register a conflicting mark. The cure is rectification or cancellation of the register under Section 57 of the Trade Marks Act 1999. An aggrieved person can apply to remove or vary an entry that was wrongly made or wrongly remains.

A key change to note: the Intellectual Property Appellate Board (IPAB) was abolished by the Tribunals Reforms Act 2021 (assented on 13 August 2021). Functions that used to go to the IPAB, including rectification petitions, now lie before the High Court or, for certain applications, the Registrar. So a rectification petition that earlier went to the IPAB is today filed in the High Court.

Civil and criminal action can run together. Chapter XII of the Trade Marks Act 1999 creates offences. Section 103 punishes applying a false trademark or false trade description to goods, and Section 104 punishes selling or possessing for sale goods bearing a false trademark. Both carry imprisonment of not less than six months, extendable up to three years, and a fine of not less than ₹50,000 extendable up to ₹2 lakh, though a court may impose a lighter sentence for adequate and special reasons recorded in writing. Counterfeiting matters are commonly pursued through police complaints and raids in addition to a civil suit.

The Trade Marks Registry is a public authority, so the Right to Information route can help you build and protect your enforcement case. You can file an RTI application to the Registry to ask about the examination status, opposition proceedings, or rectification proceedings on a mark, or to obtain certified copies of register entries you need as evidence. If you are unsure how to word the request, the AI RTI Drafter builds a clean application for you. If the Public Information Officer ignores or wrongly refuses your request, the First Appeal Builder prepares your appeal, and the PIO Reply Checker tells you whether the reply you received actually follows the RTI Act, 2005.

For a complete walkthrough of drafting, appeals and escalation, see The RTI Playbook.

Lata Joshi of Lata Foods (illustrative) held a registered trademark for her snack brand. When a rival began selling lookalike packets under a deceptively similar name in the same Pune markets, she:

1. Gathered evidence: dated invoices, advertising bills and photographs of both products, building proof of her goodwill and the rival's misrepresentation.
2. Filed a civil suit under Section 29 (infringement) and pleaded passing off under Section 27(2) in the same plaint, in the District Court where she carried on business under Section 134.
3. Sought an interim injunction under Section 135 to stop sales immediately, plus delivery up of the infringing stock.
4. Filed an RTI with the Trade Marks Registry to confirm whether the rival had applied for any conflicting registration, so she could plan a Section 57 rectification if needed.

The interim injunction stopped the copycat within weeks, long before the full trial, which is exactly why brand owners are advised to move fast and keep their paperwork in order.

• Assuming you must register before you can act. Untrue. An unregistered mark with real goodwill is protected by passing off under Section 27(2).
• Waiting too long. Delay weakens your case for an interim injunction and lets the infringer build their own reputation.
• Keeping no evidence of reputation. Without dated proof of goodwill, the first limb of the trinity collapses.
• Suing in the wrong forum. Infringement and passing off suits must go to a District Court or above under Section 134, not a lower court.
• Forgetting the criminal track. For deliberate counterfeiting, a police complaint under Sections 103 and 104 can add real pressure alongside the civil suit.

To, The Public Information Officer, Office of the Registrar of Trade Marks, [your jurisdictional Trade Marks Registry]

Subject: Request for information under the Right to Information Act 2005

Sir or Madam,

Please provide the following information regarding trademark application number [] in class [__]:

1. The current examination or opposition status of the application.
2. Whether any opposition or rectification proceedings are pending against it, and their status.
3. Certified copies of the register entry and the examination report, on payment of prescribed fees.

I enclose the application fee of ₹10. I am willing to pay any additional fees as required.

Yours faithfully, [Name, address, date]

Yes, to an extent. An unregistered mark is protected by the common law action of passing off, which Section 27(2) of the Trade Marks Act 1999 expressly preserves. You must, however, prove goodwill, misrepresentation and damage, the classical trinity. Registration makes enforcement much easier because it gives you the statutory infringement remedy under Section 29.

Infringement is the statutory remedy for a registered trademark under Section 29 and turns largely on the register entry. Passing off is the common law remedy that protects goodwill, registered or not, and requires proof of reputation, misrepresentation and damage. A registered owner can plead both in the same suit.

Under Section 135 of the Trade Marks Act 1999 a court can grant a temporary or permanent injunction, award either damages or an account of the infringer's profits, and order delivery up or destruction of the infringing goods, labels and packaging. The injunction is usually the most important relief.

Section 134 requires the suit to be filed in a District Court or higher. Helpfully, it lets you sue where you yourself reside, carry on business or work for gain, not only where the infringer operates. This is in addition to the normal jurisdiction rule under the Code of Civil Procedure.

You can file a rectification or cancellation petition under Section 57 of the Trade Marks Act 1999 to remove or vary the wrongful entry. Since the IPAB was abolished by the Tribunals Reforms Act 2021, such petitions are now heard by the High Court, or in some cases by the Registrar.

Yes. Chapter XII of the Trade Marks Act 1999 makes it an offence. Section 103 covers applying a false trademark to goods and Section 104 covers selling such goods. Both carry imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh, with limited room for a lighter sentence on recorded special reasons.

Yes. Courts grant John Doe orders, also called Ashok Kumar orders, against unnamed or unknown infringers, and ex parte orders without first hearing the other side, in urgent counterfeiting cases. These are discretionary and need a strong, well documented application.

The Trade Marks Registry is a public authority. You can use RTI to ask about the examination, opposition or rectification status of a mark and to obtain certified copies for use as evidence. The AwaazRTI tool helps you voice and track such requests.

• Trade Marks Act 1999, Sections 27, 29, 57, 103, 104, 134 and 135, India Code, Ministry of Commerce and Industry.
• Tribunals Reforms Act 2021 (abolition of the IPAB, assented 13 August 2021).
• Reckitt and Colman Products Ltd v Borden Inc 1990 1 All ER 873 (the Jif Lemon case), House of Lords.
• Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd, Supreme Court of India.

Reviewed by Dr. Shrawan Kumar Pathak. This guide is general legal information, not legal advice. Consult a trademark lawyer for your specific case.