What Counts as Infringement
Section 29 of the Trade Marks Act, 1999 defines infringement across several sub-sections, but the core test courts apply comes from Cadila Healthcare v. Cadila Pharmaceuticals (Supreme Court, 2001): whether an average consumer with imperfect recollection is likely to be confused or deceived by the similarity between the two marks. Infringement covers more than identical copying — it extends to marks that are deceptively similar, used on similar goods/services, used in advertising in a way that takes unfair advantage of your reputation, or used as part of a trade name.
A critical distinction that trips people up: only a registered trademark owner can bring an infringement action. If your mark isn't registered, you aren't without options — you can still sue for "passing off," a common-law claim built on proving goodwill, misrepresentation, and resulting damage — but it's a harder case to build than a straightforward Section 29 infringement claim, which is exactly why registration matters before you need to enforce anything.
Civil Remedies vs. Criminal Remedies
Indian law gives trademark owners both routes, and they can be pursued in parallel — there's no requirement to choose one over the other.
| Civil Remedy | Criminal Remedy | |
|---|---|---|
| Filed where | District or Commercial Court, or High Court (Section 134) | Police complaint (Section 115(4)) or Magistrate |
| What you get | Injunction, damages or account of profits, delivery-up/destruction of goods | Imprisonment 6 months–3 years, fine ₹50,000–₹2,00,000 |
| Speed of action | Interim injunction can be fast; full trial takes years | Police can search & seize without a warrant — often faster on the ground |
| Standard of proof | Balance of probabilities | Beyond reasonable doubt |
Trademark offences under Sections 103 and 104 are cognizable — meaning police can investigate, search, and arrest without needing a magistrate's warrant first. This is a real practical advantage over civil proceedings when you need to stop counterfeit goods moving quickly.
⚠️ You Can't Claim Both Damages AND Account of Profits
In a civil suit, you choose one: compensatory damages for your loss, or an account of the infringer's profits from the infringing use. You cannot claim both for the same infringement — decide which is likely to be higher, or let your evidence guide the choice during proceedings.
The Enforcement Process, Step by Step
Screenshots, purchase invoices, product photos, packaging, website/marketplace listings — all dated. This is the foundation of both civil and criminal action, and weak evidence is the most common reason enforcement stalls.
Not legally mandatory, but standard practice. A formal notice from an IP lawyer demanding the infringer stop, creating a paper trail that helps later if the matter goes to court.
File a civil suit under Section 134 seeking an injunction, and/or a criminal complaint under Section 115(4) with police, or before a Magistrate under Section 103/104. Both can run simultaneously.
An interlocutory (temporary) injunction, often granted early in civil proceedings, is frequently the most effective step — it stops the infringing activity while the full case is still pending.
The Limitation Period
You have 3 years from the date of infringement to file a civil suit, under the Limitation Act, 1963. This doesn't mean you should wait — delay in acting can itself weaken an interim injunction application, since courts look unfavourably on owners who knew about infringement and sat on it.
E-Commerce and Online Infringement
For infringement on marketplaces (Amazon, Flipkart, Meesho) or social platforms, going straight to court usually isn't the first move. Most major platforms run their own IP-complaint mechanisms, and a takedown request is faster and cheaper than litigation for straightforward counterfeit listings. Reserve court action for cases where the platform reinstates a listing after a successful complaint, or where the infringer keeps reappearing under new listings.
- Domain names: registering a domain identical or confusingly similar to your mark can itself be infringement (established in Yahoo! Inc. v. Akash Arora). Remedies run through the Trade Marks Act or the UDRP/INDRP domain dispute process.
- Social handles, hashtags, ad keywords: using a competitor's mark in these can constitute infringement if it causes confusion or unfairly trades on the mark's reputation — an actively evolving area of Indian trademark law.
Think Someone Is Infringing Your Mark?
Send us the details — we'll help you evaluate the strength of your claim and the fastest realistic route to stop it.
Common Defences Against an Infringement Claim
If you're on the receiving end of an infringement notice, being served one doesn't automatically mean you're liable. Sections 30 to 35 of the Trade Marks Act recognise several valid defences:
- Prior use — you were using the mark before the claimant's registration date.
- No likelihood of confusion — the marks or the goods/services are different enough that consumers wouldn't be deceived.
- Descriptive or generic use — using a term in its ordinary descriptive sense, not as a brand identifier.
- Fair use — honest, non-trademark use, such as referring to a product for comparison or commentary.
- Concurrent user rights — in specific circumstances, more than one party can hold rights to a similar mark in different territories or contexts.
Protecting Your Mark Before Enforcement Becomes Necessary
Enforcement is always stronger when it starts from a registered mark. Practical habits that reduce how often you need any of the above:
- Set up Google Alerts for your brand name to catch new mentions early.
- Check the Trade Marks Journal periodically — a conflicting new filing gives you only a 4-month window to oppose it before it can proceed to registration.
- Record your trademark with Indian Customs to help seize infringing imported goods at the port.
- Keep your registration renewed — an expired mark cannot support an infringement action; see our renewal deadlines guide.
Frequently Asked Questions
Can I sue for infringement if my trademark isn't registered yet?
Not under Section 29, which is limited to registered marks. An unregistered mark can still be protected through a "passing off" claim, but you'll need to prove goodwill, misrepresentation, and resulting damage — a higher bar than a straightforward infringement suit.
Is trademark infringement a criminal offence in India?
Yes. Beyond civil remedies, Sections 103 and 104 of the Trade Marks Act make it a cognizable criminal offence, carrying imprisonment of 6 months to 3 years and a fine of ₹50,000 to ₹2,00,000. Civil and criminal proceedings can run in parallel.
Where do I file an infringement lawsuit?
Under Section 134, suits can be filed in the District Court or High Court where the plaintiff resides or carries on business, giving trademark owners more flexibility than the general civil procedure rule of filing where the defendant is located.
How long do I have to file an infringement suit?
Three years from the date of infringement, under the Limitation Act, 1963. Acting sooner rather than later also strengthens any request for an interim injunction.
What should I do first if I find a counterfeit of my product online?
Document everything immediately — screenshots, URLs, dates, and photos of the product if you can obtain a sample. For marketplace listings, use the platform's own IP-complaint or takedown process before considering court action, which is faster for straightforward cases.
Can I claim both damages and the infringer's profits?
No. Indian courts require you to elect one remedy — either compensatory damages or an account of the infringer's profits — not both, for the same act of infringement.